Trademark

Trademarks, copyrights and patents all differ in the protection provided and with respect to what is capable of being protected under each unique form of intellectual property protection. A copyright protects an original artistic or literary work; a patent protects an invention and a trademark primarily protects names, logos or symbols that identify a particular creator of goods or provider of services.  More specifically, a trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. In most instances the term “trademark” is simply used to refer to what the law calls either a trademark or a service mark, so do not be surprised if you see a service mark (an example would be Roto Rooter) simply referred to as a trademark by judges, lawyers and business people.

You do not need to file any document or application to have trademark rights. In fact, trademark rights can be establish rights, albeit relatively weak rights, in a trademark based on legitimate use of the trademark alone. Having said this, however, owning a United States federal trademark has significant advantages and really should not be considered optional, despite the presence of some trademark rights that are established through use alone. Some of the more important advantages of registration include:

• constructive notice to the public of the registrant’s claim of ownership of the mark;
• a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

The United States Patent and Trademark Office website also explains that there is an advantage to having a federal trademark because with a federal trademark registration you have the ability to bring an action concerning the mark in federal court.  This statement is exceptionally misleading.  You have a right to bring an action in US federal court to enforce trademark rights even without a federal trademark registration.  Without a federal trademark registration the action you bring to enforce your rights would be under 15 U.S.C. 1125(a), and would allege that the person you are suing is creating a likelihood that consumers would be confused as the result of continued use of a very similar trademark.  You do not need to have a federal trademark in order to bring a lawsuit under 1125(a), but having a federally registered trademark makes the case much stronger.  It is, however, not technically a trademark infringement lawsuit, but rather one based on likelihood of confusion, which is a form of unfair business practices.  So what the Trademark Office says is technically correct, but very misleading.  What they are probably trying to say and just oversimplified is that you cannot sue for trademark infringement without a federally registered trademark.  That is true enough, but in a trademark infringement lawsuit you are alleging another is using your trademark, which happens but is not as common as someone using something that is quite similar, but not identically the same.  In the similar but not identically the same situation the trademark theory is under 1125(a).

Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol “®” only after the United States Patent and Trademark Office has actually registered a trademark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.