Trademarks

TRADEMARKS

Trademarks, or marks, are words, symbols, designs, combinations of letters or numbers, or other devices that identify and distinguish products and services in the marketplace. When trademarks are presented to the public via advertising, marketing, trade shows, or other means, they become one of a company's most valuable assets—potential customers identify a company by its trademark. Because certain trademarks immediately create an image of quality goods and services to potential buyers, they are valuable assets that should be protected.

When trademarks are registered at the state, federal, or international levels, their owners are provided the maximum legal protection for company names and/or company products. Thus, in creating or selecting company names and trademarks, a major concern is to design names and trademarks that may be registered with U.S.

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Patent Office. Today, the feasibility of designing names for products and services as well as trademarks for them is not likely because millions of trademarks are already registered.

The creation of trademarks involves the development of symbols or other devices to identify products and services in the marketplace. Guidelines exist for creating trademarks. Individuals who are developing trademarks must avoid generically descriptive and misleading terms as well as foreign translations. As soon as a tentative trademark has been developed, its creators should consult a patent attorney for assistance making it sufficiently distinctive to be registrable.

After the distinctive trademark has been designed, the creators need to ascertain that it is available for use. That is, it should not be currently used by another company. Thus, a trademark search is recommended by a company specializing in trade and service mark law. Once the availability of the proposed trademark has been certified, applications and related artwork are filed with the U.S. Patent Office. On receipt of the application, examiners in the Patent Office conduct a search to validate that the proposed trademark is not confusingly similar to previously registered trademarks and is thus usable. To receive a filing registration date, the owner must provide all of the following: (1) a written application form; (2) a drawing of the mark on a separate piece of paper; (3) the required filing fee; and (4) if the application is filed based on prior use of the mark in commerce, three specimens for each class of goods or services. The specimens must show actual use of the mark with the goods or services. The specimens may be identical or they may be examples of three different uses showing the same mark.

If the Patent Office search does not yield any conflicting trademarks and the proposed trademark is deemed registrable, it is published for opposition in the Patent Office's Official Gazette. Anyone who believes that a company may be damaged by the registration of the proposed trademark has an opportunity to challenge its registration. If no objection to the proposed trademark is filed, then the registration is allowed and issued. Thus, the trademark is distinctive and the ® may be used after it. Once the trademark has been issued by the Patent Office, its owners need to watch for inappropriate use of it. In addition, trademark owners need to monitor proposed trademark registrations for similar trademarks.

Trademark maintenance involves periodic filing of documents with the Patent Office to keep the registration active. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is ten years, with ten-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled. A U.S. registration provides protection only in the United States and its territories. The owner of a mark who wishes to protect it in other countries must seek protection in each country separately under the relevant laws. The U.S. Patent Office cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.

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International Trademark Association website Retrieved January 31, 2006, from http://www.inta.org/.

Randy L. Joyner