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US Trademark law
“Are You Familiar with Trademark Law?”
by Susan Dunn, The EQ Coach
Did you know that FIRST USE of a trademark will grant you common law ownership of that trademark in the particular market in which you currently offer your goods or services, but FEDERAL REGISTRATION grants you the exclusive right to a trademark in the relevant market nationwide?
You can go here for more general information on trademarks:
http://www.nameprotect.com/tm_protection_reginfo.html
So, you’ve been using some name and now you’re beginning to wonder, as things get more crowded, ‘What should I do?’ Start with a free trademark search to see if it’s already taken:
http://www.nameprotect.com/cgi-bin/FREESearch/search.cgi.
If not, you can proceed here: http://www.uspto.gov/teas/index.html to register your name on the US Patent and Trademark Office electronic system.
Once you have your name trademarked, NameProtect will monitor it for you monthly, tell you about competitors, guard against threats to your brand, and alert you if someone is trade marking your name. Go here: http://www.nameprotect.com/tmmonitoring.htm.
Perhaps you’re wondering what the BENEFITS of federal registration are? Here are some:
• Provides nationwide notice of exclusive ownership which prevents others from acquiring common low rights through innocent adoption and use
• Creates legal presumption in court of your right to exclusive use
• Opportunity to make it unchallengeable by keeping it in use for 5 years from date of registration
You can go here to learn more: http://www.nameprotect.com/reference.html#FedRegBenefits.
What are the QUALIFICATIONS for federal registration? It has to be distinctive enough to identify the business as the only source of goods and services, and ordinary names (descriptive, laudatory, geographical, personal and generic) don’t usually qualify.
STRONG trademarks include
• Fanciful. Made-up words like "Kodak".
• Arbitrary. Real words used in a different way, such as Apple computers.
• Suggestive. Real words that suggest, but don't actually describe qualities, like Greyhound bus.
WEAK trademarks include
• Descriptive Trademarks, like "Donuts," or "Low-Cost Builders"
• Personal Names, like Smith's Automotive.
• Unless they develop 'secondary meaning,' like Ben & Jerry's ice cream.
• Generic words, like "aspirin".
Source:
Go here to learn more. http://www.nameprotect.com/reference.html#FedRegBenefits
The International Trademark Association, INTA, http://www.inta.org , can give you information. Check out their Checklist for Trademarks + Trademark Proper Use Kit. Join their TM Topics Email List to post questions, get answers, and exchange ideas with members and non-members, “from top level corporations, associations and legal firms. Go here: http://www.inta.org/tmcklst1.htm .
And what about your URL? Global Domain Name Monitoring can help you protect your domain name. (http://www.nameprotect.com/freemon.html ) They provide monthly monitoring of new, potentially infringing domain name registrations from the general Top Level extensions - .com, .net, .org, and more - and country-code domain name extensions.
9. Global Domain Name Monitoring can help you protect your domain name.
10. The International Trademark Assoc. (INTA) is a not-for-profit organization of trademark owners and advisors.
1. http://www.nameprotect.com/tmmonitoring.htm
moinitor your name monthly
learn about potential competitors
guard against threats to your brand
discover if someone is trademarking your name
2. Free trademark search
http://www.nameprotect.com/cgi-bin/FREESearch/search.cgi
3. Trademark electronic application system, US Patent and Trademark office
http://www.uspto.gov/teas/index.html
4. General information on tradfemark: While first use of a mark in commerce will grant you common law ownership of that trademark in the particular market in which you currently offer your goods or services, federal registration grants you the exclusive right to a trademark in the relevant market nationwide.
http://www.nameprotect.com/tm_protection_reginfo.html
5. Benefits of Federal registration
Benefits of Federal Registration. Placement of your trademark on the Federal Register provides a host of advantages, including:
• Providing nationwide notice of exclusive ownership of a trademark, which prevents others from acquiring common law rights through innocent adoption and use of the same or a similar mark.
• Creating a legal presumption in court of your right to exclusive use of the mark, should you need to enforce that right against others.
• The opportunity to make the trademark unchallengeable by keeping it in use for five years from the date of registration.
http://www.nameprotect.com/reference.html#FedRegBenefits
6. Strong and Weak Trademarks
Ordinary names will receive little, if any, protection under trademark law and will not be entitled to federal registration. The strongest categories of marks include:
• Fanciful. These are nonsensical or made-up words that have no purpose other than to identify one or more particular goods or services. Example: Kodak brand film. Although often difficult to market, these marks are usually easy to register and once established, will enjoy the highest level of protection under trademark law. The owner of a mark like Kodak could potentially exclude use of any similar sounding mark in a wide variety of markets.
• Arbitrary. These are real words used in a different way than their ordinary meaning. Example: Apple brand computers.
• Suggestive. These are real words that suggest, but do not actually describe qualities, characteristics or functions of the product or service. Example: Greyhound bus lines suggests speed. Although these marks often do not receive the broad trademark rights that fanciful or arbitrary marks enjoy, they are usually entitled to federal registration and their owners may be able to exclude identical or similar marks in the same or related
markets.
http://www.nameprotect.com/reference.html#FedRegBenefits
7. Weak Trademarks
The weakest and least protectable marks include:
• Descriptive Marks.* These are words which simply describe the qualities, characteristics, functions or geographic origin of a good or service. Examples: The T.V. Repair Store; Twin City Cleaning Supply Company, or Low-Cost Builders.
• Personal Names.* These are names that consumers commonly associate as the name of an individual. Example: Johnson's Store.
*These marks receive limited, if any protection under trademark law. As a general rule, they are not entitled to federal registration unless they develop "secondary-meaning" in the marketplace, meaning that over time the mark has developed public recognition with consumers as a particular source of goods and services. Examples of ordinary marks that have developed secondary meaning and are now considered distinctive include U-Haul trucks, Ben and Jerry's ice cream and McDonald's fast food restaurants.
Generic words. These are words that are associated with a good or service in general without identification of any particular source of the product or service. Example: Aspirin. These words receive no trademark protection.
http://www.nameprotect.com/reference.html#FedRegBenefits
8. Qualifications for Federal Trademark Registration. To qualify for placement on the federal register, a trademark:
• Must be distinctive enough to identify the business as the only source of the goods or services. Ordinary names (including descriptive, laudatory, geographical, personal, and generic names) generally do not qualify for federal registration and exclusive use by a single entity.
See Strong and Weak Trademarks
• Must not be either identical or confusingly similar to another existing trademark. The standard is whether there would be a likelihood of confusion regarding the source of a good or service. To find a conflict, the marks need not be identical and the goods and services do not have to be the same.
• Must be in use in interstate commerce, that is, the product or service must involve commerce that crosses state or international lines.
http://www.nameprotect.com/reference.html#FedQualifications
8. Global Domain Name Monitoring
Monthly monitoring of new, potentially infringing domain name registrations from the general Top Level extensions (.com, .net, .org, and more) and country-code domain name extensions worldwide.
(.com, .net, .org, .biz, .info, .name),
http://www.nameprotect.com/freemon.html
9. International Trademark Association, http://www.inta.org/
The International Trademark Association (INTA) is a not-for-profit worldwide membership organization of trademark owners and advisors. INTA represents trademark owners to protect and advance the importance of trademarks as essential elements of international commerce. INTA shapes public policy, advances practitioners' knowledge and educates business, the media and the public on the significance of trademarks.
10. Check out the INTA Checklist for Trademarks + Trademark Proper Use Kit
11. http://www.inta.org/tmcklst1.htm
http://www.inta.org/tools/index.shtml
TMTOPICS EMAIL LIST
Email Discussion List: Got a pressing trademark question? Post it on our email discussion list and get a quick response. The list provides a forum for the free email exchange of trademark related ideas and questions between more than 1800 subscribers, including both INTA members and non-members, from top level corporations, associations and legal firms.
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