Trademark Law – The Basics

A trademark is a word or symbol used to identify the goods sold by an individual or entity, and to distinguish them from goods sold by another.  A service mark is a word or symbol used to identify the services provided by an individual or entity, and to distinguish them from services provided by others.  For purposes of this discussion, trademarks and service marks will be collectively referred to as “trademarks”.

Registration of a trademark on the Principal Register of the United States Patent and Trademark Office (“USPTO”) is prima facie evidence that the owner of the mark has the exclusive right to nationwide use of the mark in connection with the identified goods or services.  The rights created by federal registration are governed by the Lanham Act (15 U.S.C. §§ 1051 et seq.).  The owner of an unregistered mark can establish common law rights in a trademark, and block its use by others, by showing that the mark is not merely descriptive or generic; and that the mark is recognized by others as identifying the particular source of goods or services.

In general, a mark may be registered on the Principal Register if the applicant can show that the mark (1) is in use in interstate commerce; (2) is not generic or merely descriptive; and (3) is not confusingly similar to a pending application or registered mark.

The best or “strongest” marks are those that are “arbitrary” or “fanciful”; these marks acquire their distinctive meaning by virtue of being attached to a good or service. Examples of strong marks are Xerox ® and Google ®.

After the issuance of a certificate of registration by the USPTO, the registrant is entitled to use the “r in a circle” symbol denoting federal registration.  The symbol serves to notify potential infringers of the exclusive right to use a mark.  While an application is pending, or when a mark is unregistered, the owner of the mark may use the notation “TM” or “SM” to denote the existence of common law trademark rights, or the more limited rights conferred by state trademark laws.

Federal trademark protection is perpetual, provided that the owner of the mark complies with post-registration requirements confirming the continuing use of the mark in interstate commerce.  Registrations issued prior to November 16, 1989 must be renewed every 20 years.  Registrations issued after that date must be renewed every 10 years.

Successful registration of a trademark will be preceded by a thorough search of trademark databases to reduce the likelihood that a new mark will not be confusingly similar to an existing mark.  Careful consideration must be given to the words and images used in the design of the mark to ensure that it is not merely descriptive.  “Made-up” or fanciful words, such as Kleenex ® or Exxon ®, make excellent marks.  Words used in a sense other than their established meaning, such as Ping ® (for golf clubs) or Amazon ® (for online retail sales) are also excellent marks.