Trademarks defined. Trademarks (also called "brand names") are words, symbols, designs, logos, sounds, and sometimes even packaging, used by persons or businesses to identify their goods and distinguish them from similar products offered by others. A service mark is a trademark used to identify and distinguish services.
Trademark benefits. When used properly, trademarks can be highly valuable assets to inventors and businesses. A strong trademark can establish a connection in the public's mind between the trademark and the goods or services offered. Good trademarks project an image consistent with their owners' image and can therefore be powerful marketing tools.
Choosing a trademark. In selecting a trademark or service mark, be aware of the "strength" of your mark. The strongest - or most easily protected - trademarks are fanciful ones, words that have no meaning apart from their use as a trademark (e.g., EXXON or VERIZON). Arbitrary words can also be strong brands (real words that have little or nothing to do with the product or service such as APPLE for computers or DIAL for soap). Avoid words that merely describe a feature or function of your product or service, name a geographic region, or identify the owner (e.g., NUT BROWN for beer, or PORTLAND'S BEST BREAD, or WILSON'S TOWING service). Marks that are merely descriptive are not entitled to trademark protection, unless your use of them has been so lengthy and extensive that they have become exclusively identified with your products or services.
Consider these issues as well when selecting your trademark or service mark:
- What are the implications of the name? Avoid any negative connotations, and if selecting a brand to be used internationally, be sure to verify the meaning of the word in the languages of the countries where your products or services will be sold.
- Does the name fit the product? It must not be misleading.
- Is the name easy to pronounce and remember?
- Is the name too similar to one being used on a competing product or service? Be sure to perform a careful search before adopting any trademark or service mark.
Trademark rights. In the United States, trademark rights arise from use of the trademark. Thus, the first to use a trademark or service mark in connection with goods or services owns the right to exclude others from using the same or similar mark on the same or similar goods or services. If a person or business uses a mark that is confusingly similar to yours in a manner that is likely to confuse consumers, you may be entitled to stop them from doing so and recover damages in an infringement lawsuit. Without federal registration of a trademark, however, your exclusive rights to the mark exist only within the geographic region in which you sell your products or services.
Trademark registration. All states have a system of registering trademarks. However, federal registration with the U.S. Patent and Trademark Office has numerous advantages over state registration. Federal registration extends trademark rights nationwide, even beyond the geographic areas where you have done business, and gives your trademark a presumption of validity should it ever be challenged. Also, competitors have a greater likelihood of discovering your prior use of a trademark if you have registered it with the federal government. If you are planning on using a mark but have not yet begun to do so, you may obtain an early priority date by filing an "intent to use" trademark registration application. To obtain federal trademark registration, you must file a formal application and pay filing fees. For more information see www.uspto.gov.
International registration: In most countries other than the United States, a trademark must be registered to be protected. If you are planning to do substantial international business, you should consider registering your trademarks in the countries where your products will be sold.
Legal assistance: For a list of attorneys who can assist you with obtaining state, federal and international trademark registration, see professional services page.
Importance of prior searches Before adopting a trademark or filing a registration application, you should investigate to determine whether another person or company is using or has registered or applied to register the same or similar name. You can perform preliminary searches yourself by inserting your word or words into an Internet search engine, or by looking in the U.S. Patent and Trademark Office database at http://www.uspto.gov/main/trademarks.htm. Professional search companies and legal assistance in reviewing search reports are also recommended. For a listing of local attorneys practicing trademark law, see professional services.
Proper trademark use: Proper use of your trademarks and service marks is critical to preserving your rights, whether or not you've registered your brands. Always follow these simple rules:
- Use your trademark directly on the subject goods, or on the container or packaging in which the goods are sold. Use of a trademark in advertising is not sufficient to create or preserve trademark rights, although use of a service mark in advertising is acceptable.
- Do not use your mark as a noun. Always use your mark as an adjective, if possible, followed by a noun (for example, KODAK film or FIDELITY financial services).
- Distinguish your mark from other text. Use all capital letters, different fonts or colors, or at least initial capital letters to set apart your trademarks from the surrounding text of your marketing materials. Also, you may identify your marks with a "TM" or "SM" sign following the mark.
- Use the ® symbol whenever you use a federally registered trademark.
- Do not use the trademark in a possessive form unless the mark itself is possessive.
- Do not pluralize your trademark. Instead pluralize the common noun (two SCHWINN bicycles, not two SCHWINNS).
- Do not use your trademark as a verb. For instance, even XEROX cannot xerox, it can only photocopy.
When to use "TM", "SM" or ®: Use the "TM" symbol after trademarks and "SM" after service marks that are not registered with the USPTO. Upon receiving federal registration for your marks, use the ® symbol. Ideally, your symbol follows the brand name and precedes the noun it describes (e.g., CHEERIOS® cereal).