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Details on Trademark Basics

Definitions

Trademarks are names or symbols used to identify or distinguish one's goods from those sold or manufactured by another.

Service marks are used to identify or distinguish services.

Marks means either trademarks or service marks.

Trade names are used to identity a business. They may or may not constitute marks as well.

How Rights to Marks Are Created and Strengthened

Ownership. Essentially, ownership rights to a mark is created by using the mark in commerce.

Registration. Rights to marks are strengthened by registering them either at the state or federal level (or with other countries). Essentially, registration gives the owner exclusive use of the mark for that field throughout the jurisdiction of registration against allsubsequent users of the mark.

Federal registration requirements.

Conflicts with Prior Users.

Foreign trademarks.

Ownership Symbols. By law, the "R" within a circle can only be used for marks registered on the principal federal register. (Registration on the supplemental federal register or a state register is not sufficient.) For other marks, we recommend using a superscript "TM" for trademark. This at least puts others on notice that you are laying claim to this mark.

What Can Be Registered on the Federal Level?

Generally. Among others, the following sorts of items may be trademarked: container designs (for example, the classic Coca-Cola bottle), symbols and logos, names, distinctive ornamentation, sounds, colors, fragrances, buildings!

Prohibited Registrations. The following may not be registered: deceptive names, immoral or scandalous matter, national insignia, the name or image of a living person who does not consent, confusingly similar marks.

Generic Terms. Generic terms cannot be registered--or someone would be able to register the word "car."

Titles and Characters. Titles and characters names used in a series may be registered as service marks.

The Principal and Supplemental Federal Registers. Descriptive terms can be registered on the principal register only if they have secondary meaning. Otherwise they can be registered only on the supplemental register.

Strength of Marks. Roughly speaking, arbitrary and fanciful marks are the strongest, then suggestive marks, then descriptive marks.

Infringement: Likelihood of Confusion

A newer mark infringes on an earlier one if it causes "likelihood of confusion": whether an ordinary, prudent purchaser would be likely to purchase one item believing that another was being purchased.

In determining likelihood of confusion, the court will examine (among other factors) the similarity of the marks, the similarity of the goods, the marketing channels used, the strength of the plaintiff's mark, and the defendant's intent in adopting the mark.

The confusion may be based on similarities in the sight, sound or meaning of the marks.

Ways to Lose a Mark

Abandonment. Abandonment occurs when an owner discontinues use of the mark with the intent not to resume such use. Intent not to resume use may be inferred from the circumstances. Under the federal Lanham Act, non-use for two years is prima facie evidence of abandonment.

Failure to maintain quality control over the mark. If the owner licenses the use of the mark, but fails to maintain adequate control over the nature and quality of the goods or services sold under the mark, the mark may lose its significance as a symbol of quality--and therefore be deemed abandoned.

Failure to defend the mark. If the owner fails to be reasonably diligent in protecting rights to the mark, an intent to abandon may be inferred. However, the owner is not required to act against every infringing use. On the other hand, allowing some significant infringer to continue conflicting use may well weaken the mark over time.

Failure to confirm use of the mark. A federally registered mark will be canceled by the U.S. Patent and Trademark Office at the end of six years following the date of registration unless, during the final year, the owner files an affidavit stating that the mark is in use in commerce.

Failure to renew the registration. Federal registrations and renewals issued prior to November 16, 1989, are valid for 20 years. Since that date, all registrations and renewals have been valid for 10 years. Renewals must be filed within the final six months of the current period.

Dilution and the "Famous Marks" Law.

In general, trademark law is no help to an owner when there is no competition with the other party's goods or services. However, there still may be legal remedies in some instances.

In California, Business & Professions Code Section 14330 provides for relief against injury to business reputation or dilution of the distinctive quality of a registered mark or a common-law mark despite the absence of competition between the parties or the absence of confusion as to the source of goods or services. For example, Playboy Magazine was able to obtain an injunction prohibiting a fiberglass manufacturing business from using the name.

The Federal Trademark Dilution Act, which was signed into law in January of 1996, protects "famous" marks.

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