TRADEMARKS, SERVICE MARKS
AND TRADE DRESS *
1. TRADEMARKS and SERVICE MARKS.
Definition of a Trademark
A trademark is a word, phrase, symbol or design, or combination thereof, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is closely related, except that it serves to identify and distinguish the source of services rather than products. Certification marks are used to certify that goods or services of others have certain characteristics. Collective marks are used to indicate membership in an organization or to indicate that goods or services are produced or authorized by an organization.
Purpose of Trademark Law
Trademark law is designed to protect the consumer good will which merchants develop through the use of trademarks and service marks. This goal is achieve by preventing would-be infringers from using similar marks which could confuse consumers into thinking that these goods or services originate from the original mark owner. A mark thus safeguards the owner's reputation in the marketplace as well as the value of the owner's advertising dollar.
Categories of Marks
There are four basic categories of marks. These include fanciful and arbitrary marks, suggestive marks, descriptive marks, and generic terms.
Fanciful marks, such as EXXON® and XEROX®, are completely made-up. Arbitrary marks in no way describe the goods or services they are meant to identify. Examples of arbitrary marks include APPLE® for computers and IVORY® for soap. They are common English-language words, but are "arbitrary" as applied to the specific goods or services for which they are used.
Suggestive marks, such as 7 ELEVEN® and COPPERTONE®, indirectly describe the products or services they identify. All of these categories can be valid trademarks. Descriptive marks include marks which merely describe the products or services they identify, describe the geographical location from which the goods or services emanate, or comprise a person's surname. Examples of descriptive marks include CHAP STICK® and BUFFERIN®.
Descriptive words can generally be valid marks only after a number of years of use and extensive advertising resulting in "secondary meaning" as a trademark.
Finally, a generic term is a common descriptive name of goods or services such computer or lip balm. A generic term can never become a trademark.
Obtaining Trademark Protection
Trademark rights begin as soon as a mark is used. This protection is generally limited to the geographic area in which the actual use is taking place. To obtain protection throughout the United States, a trademark must be federally registered with the U.S. patent and trademark office. This requires use of the mark in commerce which may be regulated by congress, generally comprising interstate and international commerce. An applicant may file an intent to use application prior to such use in commerce if he or she has a bona fide intent to use the mark in trade and commerce in the future.
Trademark Searches
As with patents, a trademark search is recommended prior to use of the mark to ascertain whether the mark is likely to cause consumer confusion with an already existing mark. A search serves to ensure the validity of the mark. It is also important to keep in mind that trademark infringement does not require intent. The innocent adoption of a mark that is confusingly similar to that of another is actionable at law. A preliminary search should serve to avoid unknowing infringement of another's trademark.
Term of Trademark Protection
Trademark registration can last indefinitely, so long as the registration is renewed every ten years and continued use is maintained. There is also an obligation to file an affidavit of continued use during the one year time period commencing on the fifth anniversary following the date of registration.
Trademark Notice
A trademark may be identified by placing the designation ™ adjacent to it ("sm" is sometimes used for a service mark). While this designation does not indicate that the mark is federally registered, it gives the public notice that trademark rights are claimed. The statutory notice® indicates that a mark is registered with the patent and trademark office and may not lawfully be used prior to registration. TM on or attached to goods (for a product) indicates a claim of ownership of an unregistered interest in the trademark. SM on brochures, in advertising, etc. (for services) indicates a claim of ownership of an unregistered interest in the service mark
® in any usage (goods or services) indicates a registered trademark OR service mark.
The following language should be used as appropriate:
[insert mark(s)] is/are registered trademark(s) [and/or service marks] of [insert company name]; [insert mark(s)] is/are trademark(s) [and/or service marks] of [insert company name]; and all other trademarks and/or service marks are the property of their respective owners.
2. TRADE DRESS.
Definition of Trade Dress
The distinctive packaging or design of a product that promotes the product and distinguishes it from other products in the marketplace (for example, the shape of Frangelica liqueur bottles or the unique appearance of the Fuddrucker's restaurant). Trade dress can be protected under trademark law if a showing can be made that the average consumer would likely be confused as to product origin if another product were allowed to appear in similar dress (a showing that the design has acquired secondary meaning).
RONALD PETER ROMAN, P. A.
8306 Mills Drive, #699
Miami, Florida 33183
305-279-5180
RPRoman@RomanLaw.net
RPRPSU67@AOL.COM
* This article is used with permission.
