10 things you should know about trademarks
By John Alspaugh, Esq., The Trademark Group®, Seltzer Caplan McMahon Vitek
1. What is a trademark?
A trademark is any word, phrase, symbol, or device that distinguishes one company’s goods or services from those of its competitors. A trademark is often referred to as a “brand name.” A trademark must distinguish your company’s product or services from those of your competitors. Therefore, a trademark cannot be a generic term that your competitors need to describe their goods or services, like “computers” for computers or “food” for fast food. (Both of these words, however, could be valid trademarks for completely unrelated products such as shoes or hairdryers.)
2. What is the difference between a trademark, a patent, and a copyright?
A trademark protects brand names. A patent protects an invention or process. A copyright protects an original creative, artistic, or literary work.
3. Are trademarks different than trade dress and trade secrets?
Yes. Trade dress is the “look and feel” of the nonfunctional features of a product or service, such as shape or color or unique interior décor. A trade secret is any information about a product or service that derives independent economic value from being kept secret (such as customer lists or the formula for Coke).
4. Why should we register our trademarks with the USPTO?
A federal registration provides the exclusive right to use the mark throughout the United States. Registration creates a presumption that the registrant owns the mark and has exclusive rights to use it, thus placing a heavy burden on the other party to overcome the presumption. Registration allows the company to pursue infringers in federal court even if none of the other jurisdictional requirements are met. Registration can enable the owner to recover attorney’s fees and damages from infringers; it also expands the geographic scope of protection of the trademark rights. Without federal registration, trademark rights extend only to the areas in which a company has established a market presence. Federal registration provides a presumption of exclusive rights throughout the country.
5. Once our company is incorporated, don’t we “own” the name?
No. Registration of a corporate, LLC, or other entity name does not confer any trademark rights in the name, and does not ensure that you are not infringing upon the trademark rights of another party.
6. Do I need to use my trademark in order to register it?
Yes. You must be using a trademark to obtain a Certificate of Registration. However, an application may be filed with the USPTO based on an intent to use the mark in commerce. We encourage filing based on intent to use, so that you will know the trademark is available once you are ready to use it.
7. How many years does trademark registration last?
Ten years initially. The registration can be renewed for successive ten-year periods with the USPTO for as long as the trademark continues to be used in commerce.
8. What do I need to do to protect my trademark?
While your company does not have to pursue every infringer, you must take reasonable steps to ensure that the mark is not misused or infringed by others, or you risk losing all rights in the trademark. Misuse of a mark includes third party use of the mark as a noun or verb rather than as an adjective. For example, saying that you are going to “xerox” something is a misuse of the trademark XEROX as a verb. Correct use of the mark as an adjective would be to say that you are going to photocopy something on a XEROX machine.
9. What do I need to do to protect my trademark internationally?
A trademark must be registered in each country in which the owner seeks protection. Registration in numerous countries can become an expensive process. However, there are ways to register in multiple countries at one time.
10. Should I register my company’s domain name?
As a domain name owner, you should know whether your use of the domain name merits protection as a trademark and whether it infringes upon any other registered mark. If someone else owns a trademark registration that is identical or similar to the domain name your company chooses, the other party may sue you for trademark infringement, or may be able to take the domain name from you.
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John Alspaugh is the leader of the intellectual property practice group at Seltzer Caplan McMahon Vitek. He has more than 30 years of experience in assisting businesses with their IP and business transactions. He can be reached at alspaugh@scmv.com.