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TRADEMARK ESSENTIALS

     We are well into the sixth year of solo practice, and, continuing to grow strong.  The temptation to expand my office, to take in associates and to take on more administrative help is always with me, but I have resisted doing that in the interest of continuing to give immediate and personalized services to a select group of clientele.  I may be burdened with the attribute of being a "control-freak", but it has served both my clients and me well over the years.

    Important News:  The Trademark Office has taken a "hard line" against registrants of marks who list a number of goods in their application, and allege that they are using the mark on each and every one of those goods, and then when push comes to shove, say that they are not using, and/or have not used, the mark on one, two or more of the goods listed.  The Office will simply cancel the registration on the theory that the applicant for registration was in a position to know whether or not it used and was using the mark when it filed its application, or its Use affidavits, and if it was not then it simply lied to the Office, and for that its registration is yanked.  Take a hard look at your registration certificate.  Were you using the mark on all of the goods described in it when you registered the mark, or filed a Statement of Use in support of it?  If not, now is the time—and immediately—to request that the goods upon which use has not been made, be deleted from the registration.  You want to do it before you are faced with attempting to enforce a registration that is vulnerable to cancellation when all the facts are known.

 THINGS YOU SHOULD KNOW ABOUT TRADEMARKS

1.  How to Recognize Them:  A trademark is any word, name, symbol, device, including shapes, colors and smells, that identifies and distinguishes the source of a product or service from another's product or service.  Not everything is a trademark.  Ornamentation that appears on the front of a tee shirt might appear exciting and fun, but if its' function is to sell the shirt and not to identify the source of the shirt, then it is not a trademark.  A descriptive term will not be considered a trademark until you can show that the public has come to identify the mark, and the product it covers, with you as the source.  In other words, you have an uphill battle on your hands to make it yours.  Then, not all trademarks are created equal.  There are "strong" marks like Kodak, and less strong marks like "Dove".  The difference is that a strong mark will have a broad scope of protection, and a weaker mark will be limited in its scope of protection.  In the case of "Dove" you will find soap and ice cream bars under the same name.  It is highly unlikely you will ever find Kodak used on anything but the products of a single manufacturer.  Trademark lawyers encourage the selection of "strong" marks, but accept the reality that weaker marks, like the more suggestive and descriptive, appeal immediately to the public and "sell" the products.  Finally, a trademark is not a copyright or a patent.

2.  How You Can Protect Them:  You can protect a trademark by selecting a mark that is unique to you.  To do that you will want to try to make sure that no one else is using the mark or a confusingly similar mark.  You can start with searching it at the www.uspto.gov website, then using a search engine, and finally, to have the best search done, call your attorney and request a full search and opinion.  Your search results are only as good as the databases you can search, and the databases are only as good as their last updates.  Trademark rights in the United States stem from use of the mark, and any search has some degree of risk attached to it.

            After you have determined the mark is available you will want to register it federally.  Registration as a corporate name, or as a fictitious name does not serve to protect the mark as a trademark.  It takes actual use, and/or the filing of an application that matures to registration to vest ownership rights in a trademark.

3.  How to Maintain Them:  Use them properly, as trademarks, and not as descriptive terms.  Sounds easy, but sometimes it is not—depending on the mark.  Use a trademark in bold font, large letters, in a prominent position on labeling or advertising.  Use the ® or "tm" notice of trademark ownership, as appropriate.  The "tm" should be used on unregistered marks, and the ® is reserved for use on marks that have been federally registered.  Set them apart in your advertising and on your labeling.  Draw attention to them.  The last is particularly important if your "mark" is the color or shape of your label or product.  Tell people to "look for" the shoe with the swoosh on the side, or the pink-colored fiberglass.  The less "traditional" a trademark is, the greater the burden is on the owner to make sure that the public recognizes that it is "private property".

            Get your marks federally registered if possible, and maintain those registrations.  Anyone adopting a mark will generally, at least, search the federal register.  If your mark is there, or even if it is in the application process, its' presence may serve as a deterrent to the selection and adoption by others of the same or a similar mark.