Trademark Basics

A logo can be one of the first things that a consumer notices about you and your business. As such, logos can be valuable trademarks for your business and can establish goodwill among your consumer base. Therefore, it is important that you understand what trademarks are and how they are protected.

What is a trademark or service mark?

A trademark is a word, phrase, design or logo, or a combination of words, phrases, designs or logos, 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.

Do trademarks, copyrights and patents protect the same things?

No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work and a patent protects an invention.

How should a trademark be selected?

Because a trademark is a valuable asset, you should give a great deal of thought to its selection. If you adopt a trademark that is confusingly similar to a trademark previously used and/or registered by someone else, you may have problems. A prior user might challenge your use and, if the challenge is successful, you will lose the trademark, the goodwill that accompanies the mark, and the time, effort, and money you devoted to developing the mark.

With this in mind, it is prudent to conduct a trademark search to determine if there are prior uses or registrations of the same or similar trademark you are interested in and, if so, the type of products or services for which the trademark is associated with. A confusingly similar trademark is one used in connection with a product or service that is the same as or similar to the product or service under consideration and similar in sound, appearance and/or meaning. A trademark search can involve looking at federal and state trademark registers, publications, websites and other sources for the same or similar marks and products or services. Conducting a search prior to selecting your mark is preferable because, if the search identifies the same or similar marks for the same or similar products or services as you intend to use, you can move onto the next potential mark rather than spending time, effort and money in developing the initial trademark only to have to defend yourself in a litigation for infringement later on.

Is registration of a trademark required?

The answer depends upon which country you intend to use the trademark in. There are some countries in which registration is mandatory in order to obtain rights. In other countries, like the U.S., the use of a trademark establishes protectable rights in the mark, therefore, registration is not necessary.

In the U.S., however, owning a federal trademark registration provides several advantages, such as

  • Constructive notice to the public of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • 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.

When can I use the trademark symbols, TM, SM and ®?

Any time you claim rights in a trademark, you should use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim. You may only use the registration symbol, ®, after the mark has registered. Once registered, however, you may use the ® symbol only on or in connection with the goods and/or services listed in the trademark registration. Use of a ® with any unregistered trademark may result in claims of fraud.

What is the scope of rights in a trademark?

Not all words, phrases, designs or logos, or a combination of them are capable of functioning as a protectible trademark. Trademarks and trademark protection may be categorized along a continuum ranging from marks that are highly distinctive to marks that are generic names for products or services.

At one extreme of the continuum are marks that, when used in relation to the products or services, are completely arbitrary or fanciful, for example, KODAK for film processing, PEPSI for soda APPLE for computers. Next are suggestive marks, which are marks that, when applied to the products or services, require imagination, thought or perception to reach a conclusion as to the nature of the products or services. Examples of suggestive marks are SNO-RAKE for a hand tool and UNDERNEATH IT ALL for undergarment products. Following suggestive marks are descriptive marks. A mark is considered descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the products or services. Marks that are merely descriptive of the products or services are not protectible unless they have acquired distinctiveness through continued use. Examples of merely descriptive marks are APPLE PIE for potpourri, BED & BREAKFAST REGISTRY for lodging reservations services, and COASTER-CARDS for coasters suitable for direct mailing. Last on the continuum are generic marks, which are terms that the public understands primarily as the common or class name for the goods or services. Examples of generic marks that have been denied trademark protection are BUNDT for a ring cake mix, ANALOG DEVICES for devices having analog capabilities and SCREENWIPE for premoistened cloths for cleaning computer and television screens. These generic terms are incapable of trademark protection.

What is the difference between a trade name and a trademark?

A trade name is used to identify a company or business and serves as the name of the company or business. In contrast, a trademark is used to identify the source of the products or services that the company or business sells or provides. However, a trade name can also function as a trademark depending upon the context in which it used. If a trade name is used as more than just the company name and informs consumers where a product or service is coming from, then it is being used as a trademark. For example, if the name is used as a noun (“You can only get tires from Goodyear”), it is a trade name. If the name is used as an adjective (“You can get GOODYEAR tires at your local tire retailer”), it is a trademark.

Can a trademark fall into the public domain?

Yes. Trademarks can fall into the public domain and become available for use by anyone when a trademark owner (1) permanently ceases using the mark; (2) intentionally abandons the mark; or (3) loses the exclusive right to mark through misuse of the mark.

Is there a proper way to use a trademark?

Yes. Proper use of a trademark is essential for its continued protection. Here are some general guidelines:

A term, when used as a trademark, should always be used as an adjective modifying the generic name of the product that is either stated or implicit in the context of use. Never use a mark as a noun.

Correct: NICTIC™ widgets are the best.

Wrong: A NICTIC™ is the best. NICTIC™ means quality.

While it is sometimes possible to not always include the generic name, class or type of the designated goods or services used with the trademark, this should only be considered once the mark and product are well-recognized by consumers. Be especially cautious about this when the product involved is very innovative and thus initially has no previously well-known generic name. In the case of well-known products and marks, the omission of the generic name is not so critical, for example, “Have you driven a FORD lately?” instead of “Have you driven a FORD car lately?”

Use a mark prominently, for example, by use of size, color, position, print style and raised letters, in comparison with its surroundings. The mark should clearly stand out on a label, advertisement and in text, and clearly refer to the product, service or line of products or services that it designates the source of to customers.

When using a mark in text, the mark should at least appear in all capital letters. Adding quotation marks, italics, or boldface is also helpful.

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