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Trademark Basics
What is a Trademark?
A trademark (or "mark") is any word, term, name, design, slogan,
symbol or other distinctive item that serves to identify a
specific product brand, for example: Dell (brand of
computer manufacturer); Kleenex (brand of facial tissue);
Mobil (brand of gasoline); "Pepsi, the choice of
a new generation" (slogan for Pepsi soft drinks); and
the Rainbow Peacock logo of NBC. Similarly, a "service
mark" is any word, term, name, design, slogan, symbol or other
distinctive item that serves to identify a specific brand
of service. For example, Jiffy Lube (automotive oil
change service); and Enterprise Rent-A-Car (car rental
agency). Trademarks and service marks are treated identically
under the law.
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Why Is Trademark
Law Important?
Although it has been said that "ignorance is bliss",
in the arena of trademark law ignorance can spell disaster.
Whenever a business or product name is used on packaging,
a label, a sign, an Internet site, or in any way advertised
to the public, it falls within the arena of trademark law.
For instance, when a small business uses its mark in advertising
a product or service in the local newspaper, it becomes subject
to trademark law. As a result, few businesses are not subject
to this complex body of law. It is therefore vital that business
owners become aware of their rights, duties, and obligations.
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What Advantage
Is Gained By Federal Trademark Registration?
Use of a trademark establishes rights to it. If use of a trademark
can be shown, even trademarks that are not registered are
entitled to "common law" rights. Absent federal registration
of a trademark however, these common law rights will only
extend to the geographic area in which the trademark is being
used. Federal registration extends these rights nationwide.
It is also far easier and less costly to prevail in an infringement
action if a trademark is federally registered. For example,
if you are the first party to federally register a trademark
for a certain type of product, there is a legal presumption
that you are the mark's owner, and that later users intentionally
copied the mark. This makes it far easier to collect damages
and/or attorneys' fees against an infringing party. By failing
to federally register your trademark, you will likely face
an uphill battle in the event of a legal challenge against
your mark.
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Are There
Other Advantages To Obtaining Federal Trademark Registration?
Yes, additional advantages include the following:
- The right to put the registration notice
"®" after the mark, which notifies others of your trademark
registration;
- Provides access to federal courts;
- Deters use of the mark by others;
- Protects the registrant's ability to
expand its use of the mark nationally;
- Allows the registrant to stop the importation
of goods that use infringing marks; and
- If the mark is kept in continuous use
for five years after the registration date, the right to
immunize the mark from certain infringement actions.
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Why Is It
Important To Conduct A Trademark Search?
Millions of new businesses, products and services are created
each year. Conflicts between trademarks, even those which
may appear to be original or unique, are extremely common.
As stated above, owners of trademarks are entitled to bring
infringement suits against others for the use of identical
or confusingly similar marks. Although not all such suits
are successful, at the very least they are extremely costly
to defend against. More importantly, successful infringement
actions can force the losing party to stop using the offending
trademark. This of course can be very expensive, as all items
which contain the infringing trademark (e.g., signs, letterhead,
packaging) must be replaced. In addition, much of a business,
product, or service's value and goodwill is often tied to
its name or logo. In certain cases, an infringing party may
also be forced to pay significant damages and/or attorney's
fees. It is therefore extremely important to conduct a thorough
trademark search prior to using a particular mark.
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What Is
The Difference Between A Federal/State Trademark Search and
a Common Law Search?
Federal and state trademark searches scan for identical or
"confusingly similar" marks in both the federal register and
the registers of each state. Common law searches seek out
all instances of actual use of a trademark, regardless
of whether the mark has been registered. It must be remembered
that first use of a trademark establishes its ownership in
a particular geographic region. As a result, even if a particular
mark has been registered with state or federal governments,
it could not be used if another company has common law rights
to that mark within a certain geographic region. This could
preclude the use of a desired mark in large regions of the
country, including large metropolitan areas. Consequently,
any company that desires to expand in the future, or market
itself on the Internet, should invest in a common law search,
in addition to Federal and state searches.
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Do Startup
Businesses Need To Be Aware Of Their Rights And Obligations
Under Trademark Law?
Yes. Even small local businesses or "start-ups" may encounter
a challenge to their trademark in the future. In addition,
many small businesses end up being very successful and seek
to expand. With the exponential growth of "e-commerce", this
is truer today than ever before. The Internet provides opportunities
for national and global expansion, even for the smallest businesses.
This trend will only continue in the future. It is therefore
important for businesses of all types and sizes to choose
and protect their trademarks with extreme care.
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Should I Have
An Attorney Review The Results Of A Trademark Search?
In many cases, the answer is yes. Although it may be easy
to determine whether an identical conflict exists with regard
to the results of a trademark search, this may not be the
case with marks that are "confusingly similar." Marks that
sound or appear similar, or have a similar meaning, should
be analyzed in the context of trademark law. This is best
done by an attorney who practices in this highly specialized
field. Even a mark that is identical to another may not necessarily
be precluded, if there is no likelihood of confusing the two
marks (i.e., as in the case of Dove ice cream bars and
Dove soap). Consequently, it is often prudent to have
an attorney review the results of a trademark search. With
Allmark you have a choice. You can either interpret the results
of your trademark search yourself, or for an extremely reasonable
fee, you can have one of our trademark attorneys carefully
analyze your search results and provide a written opinion.
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