The Value of a Trademark (and Service Mark), and How to Initiate It

A Trademark is a peculiar distinguishing mark (or device) affixed by a manufacturer or a merchant to his/her goods; it is the exclusive right of using the distinguishing mark, which is recognized by law.^[10], ^[11] A Service Mark is a mark used in the sale or advertising of services to identify the services and distinguish them from the services of others. The application for a service mark is handled in the same way that an application for a trademark is managed. These two fairly similar terms will be used interchangeably throughout this book.

^[10] As defined by http://dictionary.reference.com/search?q=Trademark.

^[11] For further details, please reference http://www.uspto.gov/web/offices/tac/tmlaw2.html.

A trademark can also be thought of as any distinguished word (e.g., Poison), any distinguished name (e.g., Giorgio Armani), any distinguished symbol or device (e.g., the Pillsbury Doughboy), any distinguished slogan (e.g., Got Milk?), any distinguished package design (e.g., Coca-Cola bottle), or any distinguished combination of these that serves to identify and uniquely identify a specific product from others in the market place or in trade. Even an audio sound (e.g., NBC chimes), a color combination, a smell, or a hologram can be registered as a trademark under certain circumstances.

A service mark (e.g., Harrods) is somewhat similar to a trademark, but it is used in the sale or advertising of “services” to identify and distinguish the services of one company from those services of another other company.

The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration. This review is performed in order to determine if an applicant meets the requirements for federal registration. The USPTO will not, however, decide whether one has the right to use a particular mark (which differs from the right to register a mark). Even without a registration, one may still use any mark adopted to identify the source of ones goods and/or services. Once a registration is issued, it is up to the owner of the mark to enforce its rights in the mark, based upon the ownership claims of the federal registration.

The USPTO employees will gladly answer questions about the application process in the United States. However, the USPTO employees cannot

• Conduct narrow or wide trademark searches for the public

• Comment on any form related to the validity of registered marks

• Answer any questions on whether a particular mark or type of mark is indeed eligible for trademark registration

• Offer any form of legal advice (or opinions) regarding common law trademark rights, state registrations, and/or trademark infringement claims

Is the registration of a trademark or service mark always required? The answer to this is no. You can establish rights in a particular trade or service mark, based upon legitimate use of the mark. However, filing and owning a federal trademark or service mark registration on the “Principal Register” provides several advantages, including the establishment of

• A constructive notice to the public of the registrant's claim of ownership toward the exact mark

• A legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration

• The ability to bring an action concerning the mark in federal court

• The use of the U.S. registration as a basis to obtain registration in foreign countries

• The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods

When can you use the trademark symbols, ™, ^SM, and ©? Any time you claim rights in a mark, you may use the “™” (trademark) or ^“SM” (service mark) designation to alert the public to your claim(s), regardless of whether you have filed an application with the USPTO.^[12] However, you may use the federal Registration symbol “®” only after the USPTO actually “registers” a mark and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the Federal Trademark Registration:

^[12] For further details, please reference http://www.uspto.gov.

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs that identifies and distinguishes the source of the goods of one party from those of others.

• A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Throughout this entire book, the terms trademark and mark refer to both trademarks and service marks.

Is there an electronic form on the Internet for filing a trademark application? Yes. Using the Trademark Electronic Application System (TEAS) available at the USPTO,^[13] you can file the application directly over the Internet. The specialized features of the electronic filing include

^[13] For further details, please reference http://www.uspto.gov/teas/index.html.

• Online Help. This provides online hyperlinks that present Help sections for each of the application filing data fields.

• Validation Function. This helps avoid the possible omission of important information while filling out the form.

• Immediate Reply. The USPTO immediately issues an initial filing receipt via e-mail containing the assigned application serial number and a summary of the submission. This is important time and date information, as a matter of record, in some time sensitive situations of filings.

• 24-Hour Availability. TEAS is available 24 hours a day, 7 days a week (except 11 p.m. Saturday to 6 a.m. Sunday), so receipt of a filing date is possible up until midnight EST.

If you do not have Internet access, it is possible to access TEAS at any Patent and Trademark Depository Library (PTDL)^[14] throughout the United States. Many public libraries also provide Internet access.

^[14] For further details, please reference http://www.uspto.gov/web/offices/ac/ido/ptdl/index.html.

Are there other ways to file besides the Internet? Yes. While the USPTO greatly prefers that you file electronically (for workload efficiency reasons), using TEAS, you may also either mail or hand deliver a paper application to the USPTO. You can call the USPTO's automated telephone line, at (703) 308-9000 or (800) 786-9199 to obtain a printed form. You may NOT submit an application by facsimile. Any individual may also wish to utilize a U.S. Postal System mailing address to file a new application, at the following address:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

Must you hire an attorney? No—however, it is highly recommended. If one prepares and submits his or her own application, he or she must comply with all requirements of the trademark statute and respective rules. If one, in fact, chooses to appoint an attorney to represent his or her interests before the USPTO, then the USPTO will correspond only with his or her attorney. The USPTO cannot help any party select an attorney.

International Trademark Association (INTA)

The International Trademark Association (INTA) is a not-for-profit membership association of more than 4,300 trademark owners and professionals^[15] from more than 170 countries. The INTA™ is dedicated to the support and advancement of trademarks, worldwide and related intellectual property as elements of fair and effective national and international commerce.

^[15] For further details, please reference http://www.inta.org/about/membership.html.

In 1878, 17 merchants and manufacturers who saw a need for an organization “to protect and promote the rights of trademark owners, to secure useful legislation and to give aid and encouragement to all efforts for the advancement and observance of trademark rights,” founded the association. After 125 years in operations, the INTA continues its mission to represent the trademark community, shape public policy, and advance professional knowledge and development.

The INTA Mission

INTA's mission is to support and advance trademarks and related intellectual property as elements of fair and effective national, regional and, international commerce. INTA supports this mission and its members through policy development and advocacy, communications, educational programming, and enhanced member services.

INTA's vision is to be the world's preeminent organization devoted to the generation and communication of knowledge in the trademark field and the application of that knowledge to improve legal practices within the trademark community.

Four strategic directions drive INTA's future in meeting its educational, advocacy, and membership objectives:

Along with INTA's worldclass leadership team, its most important asset is the talented and committed group of volunteers who serve on its many committees. INTA's goal is to make the best use of these vital resources in order to maintain its leadership position in the worldwide trademark communities. Its purpose, which is so important to global commerce, is to protect and promote the rights of trademark owners and to secure useful legislation worldwide.

For more information regarding INTA, please feel free to contact:

International Trademark Association

1-(212)-768-9887 Telephone

1-(212)-768-7796 Fax

Trademark Notice INTA, the INTA logo, USTA, the USTA logo, and inta.org are trademarks, service marks, and/or registered trademarks of the International Trademark Association in the United States and certain other jurisdictions. All other trademarks and service marks that appear in these pages are the property of their respective owners and are used solely to refer to those companies' goods and services.