TRADEMARKS & SERVICE MARKS
Businesses have increasingly realized that the value of their business resides in their intellectual property rights and particularly in their trademarks or service marks. These translate into the “good will” which keeps the customers coming back. In addition, Trademark registrations have become essential to the actual protection of profits from a growing cadre of infringers who find it easier to divert your business than to develop their own. Mirowski & Associates provides (1) Federal (USPTO), State (all States) and International (WIPO “Madrid Protocol”) trademark and service mark registrations, (2) Advice regarding protecting trademarks from infringement and dilution and (3) Trademark Litigation (Prosecution and Defense) in the Courts and in front of the Trademark Trial and Appeal Board (TTAB).
- TRADEMARK BACKGROUND
- WHAT IS A “TRADEMARK” and WHAT IS A TRADE NAME
- BENEFITS OF FEDERAL REGISTRATION
Ever since humans began to craft products for sale or trade to others, they must have recognized that there was an advantage to having others recognize the origin of that product. Before long, ancestral merchants began to use distinctive symbols or marks to designate the source of their products. The “marks” served dual purposes: (1) For pride and recognition – for the same reason an artist signs his or her painting (2) Commercial – the knowledge that a satisfied customer will often come back and show the product to others. The tendency to continue to use a particular product or service is generally referred to as business “good will.” The mark that evokes such goodwill is referred to as a “trademark” or “service mark.” Trademark law has evolved for the protection of symbols, words, phrases and names which are associated with goods and/or services and serve to identify the source of those goods and/or services. The goal of the law is to protect a merchant’s right to continue to profit from goodwill and protect that goodwill from dilution by imitation and similarly confusing designs. Trademarks can be extremely valuable as is well known to the makers of such products as “Coca-Cola™.” The more subjective the value of the product, the more important the trademark becomes to marketing the product.
A trade mark identifies the source of goods and not the goods themselves. A service mark identifies the provider of services and not the services provided. The term “trademark” is often used to generally refer to both “trade” and “service” marks. A trademark may be whatever it is that distinguishes goods or services in the marketplace from other goods or services. A trademark may be composed of, or include, a design, a symbol, an ornamentation, a set of numbers or letters, a series of sounds or a three dimensional object. Trademark law attempts to protect public expectations in that the public relies upon the mark so that “it will get the product which it asks for and wants to get.” Two Pesos, Inc. v. Taco Cabana, Inc. (1992) 112 S. Ct. 2753. Trademark law is concerned not only with the source of the products but also with “the good will, reputation, and consumer protections associated with a particular trademark.” See Intel Corp. v. Terabyte Int’l, Inc. (9th Cir. 1993) 6 F 3d. 614.
A “trade name” is a name used by a company to designate a company or similar entity as opposed to the “goods” or “services” of the company. For example, “Xerox” when used to identify the company is a trade name. At the same time, the term “Xerox” may be used to identify the source of certain copy machines at which times it is being used as a “trademark.” One may not register a trade name unless it is used also as a trademark.
Registration of a trademark serves several important purposes, the first of which is to identify the owner of the trademark. Federal registration provides a number of additional benefits including:
- 1. The right to sue in federal court for trademark infringement.
- 2. The basis for recovery of damages, lost profits and costs from an infringer. It is also necessary for the award of federal statutory damages and penalties.
- 3. Establishing constructive notice of ownership of the mark and eliminating an infringer’s use of the “good faith” defense limiting the damages collectable by the Plaintiff.
- 4. Allows the owner to deposit the registration with Customs officials for the purpose of stopping goods bearing an infringing mark from being imported into the country.
- 5. Provides “prima facie” evidence of the validity of registration.
- 6. Allows the owner to limit the grounds for attacking registration by making certain rights “incontestable” five (5) years after filing.
- 7. Allows criminal prosecution for counterfeiting in addition to the civil remedies.
- 8. Provides a basis for the filing of trademark applications in foreign jurisdictions.
- 9. The ability to use the federal registration symbol “®” with the mark.