Trademark--What's In a Name?

Trademarks are words, symbols or devices used to distinguish the goods or services of one from those of others.
Throughout this article the word "mark" us used to mean both Trademarks and Service Marks; the difference is the type of basic use, either for goods or services. What we state for marks generally applies to both.
If your product or service has a name, the investors would want to know, in return for their funds, stock or other remuneration, that the mark is valid. It is the trademark this is the name that will sell your goods and services. Witness marks like MYST�, Xerox�, Living Books� how would these sell if the investors were all making claims against producers, distributors and others because the mark was not useable or was not secure?
The real reasons that marks are important is that they serve to identify the source of goods/services and set them apart from other businesses.
The basic standard of infringement is whether there is "likelihood of public confusion." Marks can be licensed, bought and sold for fees and/or royalties, they can serve as the basis for licensing a product. They create distinctiveness, a mood, a theme or set a standard for excellence or a solid foundation for consistent advertising and "branding." They proclaim to the public the quality and nature of the name and of those behind the name.
SECTION 45 of Trademark Law Revision Act (TLRA) redefines trademarks as "any word, name, symbol or device or any combination thereof (1) used by a person, or (2) which a person has bona fide intention to use in commerce and applies to register on the principal register to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source or goods, even if that source is unknown."
A Service Mark is similar, except that it is used to identify and distinguish services. NOTE that the symbol (R ) may be used only if you have a valid federal registration certificate; otherwise use or , depending on the type of mark, to give notice. A mark can be a color, distinctive sound. It can be a "sound alike," a face, a character, words, drawing (logo), and many "trade dress" styles can be distinctive of a restaurant, or "package dress" as a way of packaging software, by way of examples. A mark must not be descriptive, and should be as fanciful as possible; witness: "Kodak" that 100 years ago might be a misspelling for a bear and is now film.

Yet to qualify as a registrable mark one must properly use it. A "Use in interstate or international commerce" and "commerce that can be regulated by Congress" is the key to U.S. rights. The mark should be registered at the PTO. Especially today where Domain Name rights and trademarks are interwoven, registration is imperative. Trademark rights in the U.S. have no "extra territorial effect" in the rest of the world.

To qualify as a trademark the mark must be used by someone with the intent that the mark serve to identify the user's goods or services.

If a word or "mark" is used in a way that does not identify the goods or services it is not being used as a trademark.
An example of this is on the Web Page of a new company, the company gets its URL, then does not put up a page for a while. The URL assignment alone is not a "use" of the mark "in commerce." When the company gets its page up the page in plain text HTML states it is for "Mark" goods and "in construction." Still the mark is not used to advertise the goods but to announce the web page. Still later, parts of the page are ready, the mark is more bold with the look of a "logo," and the mark is getting closer to a "use."
When there is a use of the mark will be when the Website clearly states the mark and identifies the goods/services advertised by that site.
When the full color page is up and the mark emblazoned on it as centered, stylized perhaps with a logo and word mark together, there are descriptions of the goods being advertised and a user can even order the goods online. This is most likely a sufficient use in the class 035, "business services."
Note that registration is NOT essential to establish rights but failure to register may render useless any complaint if another gets a similar URL or if its owner needs to go to court for infringement.
Do not make a "minimal" or small use of a mark and register based on that use. This type of "use" while technically valid, such as sending a sample to a friend in another state may get the mark registered but will not hold up under any contest. The first defense an infringer seeks is that your registration is not based on a real "use."

Otherwise registration can be sought for a mark that one has an INTENT TO USE.

This is referred to as a Section 1(b) application, and is based on the BONA FIDE intention to use a mark in commerce within a limited time.
The United States has joined many international treaties and thus recognizes not only actual use but "ITU" or intent to use registration applications.

The U.S. welcomes foreign applications with a straightforward and uniform registration procedure.

Registration is usually on the Principal Register, for marks that qualify, that are "fanciful" and getting real "use." A mere posting of the mark on a site for purposes of "branding" without a real service performed is not good enough. Place an "SM" (for services) or "TM" for goods near the mark.

There is a "supplemental register" for marks that may be deemed "suggestive" or "descriptive" and may not qualify for the principal register. The mark so registered is still entitled to be published and to the examiner's rejection of a mark that is too similar.
Registration is not absolutely necessary for every new mark. Many are registered because of the statutory benefits and competition. registration can take a year and a half and can be expensive.

Registration is essential to secure a mark and notify the world of the Applicant's exclusive use thereof and to quickly establish a prima facie exclusive, nationwide and world-wide right to use, sell, license, assign or buy, settle, mediate and litigate a mark used in international and/or interstate commerce.
Section 1 of the Trademark Act: "The owner of a Trademark used in commerce may register his trademark...(a) by filing....(1) a written application...(2) a drawing of the mark (3) specimens...." and seems a simple matter on its face. Trademark attorneys and examiners alike know, however, the difficulties in acquiring registrations and licensing and protecting and enforcing associated rights regarding the mark as used in business.

What are the benefits of registration?

In Federal court, one can ask for seizures of goods bearing infringing marks,
damages based on the infringer's profit,
injunctions and
the owner can press criminal charges.
A registered mark may be registered with the Treasury Department to prevent importation of goods bearing an infringing mark.
It is impractical to have a great mark if the owner cannot move quickly to stop an infringer. Therefore the need for federal registration is great, for without it, one may only have a "colorable" right in the mark and spend thousands more, wasting time, and have to go through an expensive and time-consuming proof of FIRST use and other proof of facts behind it.
Federal registration is absolutely necessary in any program to protect the rights of a trademark owner, both defensively and offensively.

Without it, a latecomer may obtain federal registration of the mark and block both the expansion of the trademark owner's use of it and his later attempt to register it.

The late comer might even damage the prior user by diluting the mark and causing confusion.
A first registration, even of a mark first used by , has "registration priority" so that a later comer to the PTO may find his rightful claim blocked and made more difficult.

Government Protection : The Patent and Trademark Office will automatically reject an application in the name of a latecomer to register the same or a confusingly similar mark, and the rights of the trademark owner will always be superior to those of a latecomer.

Important attributes which unregistered marks do not have:

While some of these attributes are only evidentiary in nature, others are substantive.

Registration provides U.S. trademark rights in the owners of federal registrations by pre-proving a "prima facie" case of ownership.

This type of proof can be difficult to obtain and prove to a judge, leaving an infringer time to run.

Principal register registration is constructive notice and becomes "incontestable" under certain circumstances after the 5^th year after registration. Constructive notice may be the greatest single advantage of a principal registration.

CAUTION however: the owner MUST make a declaration of continued use in the 5^th year or the registration is cancelled under Section 8.

Marks are "property" of a corporation, LLC or other business and need to be insured by registration against loss from such things as: infringement, dilution, importation of "bogus" goods, international piracy, "passing off" their identity as yours, and many other types of rip-off. See the article on the conflict with WWW
Domain Names: for an in depth coverage on the liability attached to these uses. See: TRADEMARK vs. DOMAIN NAMES ON THE WWW.
The registration process is somewhat like litigation, or an IRS audit, with a little extra time thrown in. It takes up to 2 years to complete and may take longer.

An examining PTO attorney will:

Question the mark, review it for similarity to others, make sure it can function as a mark, cite cases and federal procedural rules to make you prove up the mark.
An expert on the subject should be consulted for you to understand and hopefully to prevail.
The PTO attorney must be convinced that your mark fits the myriad of requirements for registration. To their credit, they are doing their job to be sure that every mark is backed up by proper declarations of facts and to prevent confusion for the consumer, the wholesaler and the user of services and you.
See how to register the mark in TM Registration Basics.

BEFORE REGISTRATION DO A SEARCH:

BEFORE YOU SPEND time and money on a name that might already be registered or used.
One needs to search the registers of all states and nations use will occur in, as well as in all other records of "common law trademarks," not registered but still valid and corporate names, domain names, and the like.

Anyone who seeks to create and use a mark or secure a federal or state registration, sell or buy a mark or rights thereto, should obtain the services of a competent attorney who practices trademark law.

Otherwise one might waste the application fee, cost of manufacturing, installing files on the Web, packaging, printing and much time and loose otherwise valuable rights.

One way to find an attorney is to contact your local Bar Association such as the San Francisco Bar or Marin County Bar.