Helping You Protect Your Trademarks

A trademark is a name, design, logo, slogan, symbol or other designation that identifies the source of a product or service. The term “trademark” is technically used to identify the brand of a product, whereas the term “service mark” is properly used to identify a brand of services. Trademarks and service marks are often referred to simply as trademarks or “marks”.

A trademark/service mark provides its owner with the legal right to prevent other persons and companies from using names, designations or marks that are likely to cause confusion with the owner’s mark. Likelihood of confusion is determined by comparing the respective marks with regard to sound, appearance and meaning. Additional factors that are considered and compared are the respective types of goods/services, channels of trade and geographic territories involved.

A “made-up” or arbitrary trademark receives strong legal protection. A commonplace or descriptive term is often considered weak and receives less protection. If a court determines that a name, designation or other mark is likely to cause confusion with a previously used mark, this constitutes trademark infringement. An infringer can be prohibited from using an infringing mark and can be assessed monetary damages.

Traditionally, a business or individual becomes the owner of an available trademark/service mark by adopting the mark and using it in connection with goods/services (i.e. on labels, in advertising). The first or original owner acquires legal rights in the mark and then possesses the right to prevent competitors from using marks that are likely to cause confusion. Before adopting and using a trademark, it is advisable to conduct a search of preexisting marks to determine if the mark is available for your use and ownership.

Although trademark rights can be acquired by simply adopting and using a mark, as described above, those rights are strengthened considerably by registering the mark. The trademark owner’s legal rights are improved within that owner’s state (i.e. Florida) by registering the mark with an appropriate state agency, such as the Florida Division of Corporations.

The Benefits Of Registering

Even stronger protection is provided by registering a mark federally with the United States Patent and Trademark Office. By owning a federal registration, the trademark/service mark owner provides the public with nationwide legal notice of the owner’s claimed trademark rights. As a result, the trademark owner’s ability to protect their mark nationwide is improved significantly. A federal registration also provides the trademark/service mark owner with a number of other important substantive and procedural legal benefits under the federal Trademark Act.

An application to federally register a mark may be filed either before the mark is actually used or after it is first used. In order to be properly used, a mark must typically be applied to goods or advertised in connection with services that are sold or provided in interstate commerce.

This means that the goods or services must be involved in a commercial transaction that the United States Congress has the ability to regulate. Shipping products across state lines and advertising services that are offered outside the state (i.e. via newspaper, internet) usually qualify as acceptable interstate commerce.

An intent to use application can be filed for a mark before it is used in interstate commerce. This procedure to “reserves” a proposed mark and can be especially important if the mark will not be first used for a prolonged or undetermined period of time.

When an intent to use application is filed, the owner is considered to constructively (legally) use the mark on the date the application is filed. That owner’s rights will then take precedence over the rights of any competitor who commences using a confusingly similar mark after the trademark owner’s filing date.

Alternatively a federal application can be filed for a mark that has already been used in commerce. In such cases, the trademark owner may have already acquired at least some trademark rights based upon the owner’s prior unregistered use of the mark. Those rights will be strengthened nationally when the application is filed.

The trademark examination process can take from a few months to several years to complete. In most cases, if the mark is truly distinctive of the owner’s goods and services, a federal registration will be available for the mark.

Your trademark/service mark identifies YOUR brand of products or services. It represents the reputation that you have worked to develop and the business good will that you have acquired. Accordingly, it is important that you select as protectible a mark as possible.

Things To Avoid

Do not choose a mark that sounds like or is a variation of the marks already used by your competitors. In addition, select an arbitrary or made-up mark. Such marks (for example, EXXON, GOOGLE, KODAK and CLOROX) have no meaning other than to identify a brand of product or service. Arbitrary marks are strong and distinctive. They establish a recognizable brand identity and receive significant legal protection. Alternatively, avoid descriptive terms (for example, RAISIN-BRAN and VISION CENTER). Such marks are legally weak and usually receive little, if any, protection, at least initially.

Be sure to continue using your mark without significant interruption or lapses. You will maintain ownership of a mark as long as you continue using it on your goods and/or in advertising your services. If you discontinue using your mark, there is a risk your rights will expire. In such cases, the mark may be free for others to use.

You should also be careful to diligently monitor your industry and to act promptly if a competitor uses a mark that you believe is likely to cause customer confusion with your mark. If you fail to take action to protect your trademark interest, your mark could eventually be considered generic. Trademarks such as ASPIRIN, ESCALATOR and FORMICA were all proprietary at one time, but eventually became generic and lost trademark protection when their owners failed to adequately police the use of those marks by others.

You should apply the trademark notice symbol ™ adjacent any trademark that you apply to product. The service mark notice symbol SM should be applied to advertisements for your services. When a federal registration is obtained, you may apply the federal notice symbol ® adjacent to your mark.

Learn More About Your Trademark Options

To talk to our lawyers about your questions regarding trademarks, call William Noonan in Fort Myers at 239-481-0900 or send us an email to schedule your consultation. Our attorneys are here to help you address your intellectual property concerns.