Trademarks

What is a trademark?
A trademark is a word or words or design that helps consumers identify the source of goods or services, such as “Pepsi” for soft drinks or “Palomar Patent” for intellectual property law services. (Technically, a trademark applied to services is called a “service mark”.)

What are trademark rights?
In general, trademark rights give the trademark owner the right to prevent others from using a confusingly similar trademark on similar products or services in the geographic market area. The degree of protection afforded to a mark varies. Highly descriptive marks (e.g. "SUPER CLEAN LAUNDRY") receive little or no protection while marks that are "coined" (e.g. "APPLE" for computers) can get relatively strong protection. There are exceptions to the general rule. For example, some marks are so well known and associated with a single company (e.g., Xerox or Pepsi) that others could not use the mark on even un-related products.

How are trademark rights acquired?
Common law trademark rights accrue by being that the first to use a mark in commerce. State registration of a trademark after use puts others on notice of your use and provides additional state protections. State registration is primarily used by local service providers. A federal registration provides national protection.

How is the claim of trademark rights expressed?
The symbol TM or SM after the mark indicates that the user is claiming trademark rights. The claim may be based on common law, a state registration, or a pending federal registration. Federally registered marks are usually indicated by ® after the mark.

How do I know if someone already has rights in a trademark I want to use?
What is a trademark search?
How reliable is a search?

Because trademark rights can be acquired simply through use (“common law” trademark rights), one cannot always be sure that another does not have prior rights. If you are unaware of another’s use of the mark or a confusingly similar mark, then a trademark search by an attorney specializing in trademark law is conducted as an attempt to discover if anyone else has potentially conflicting trademark rights. Anyone who is of the opinion that your mark is confusingly similar with their mark or that your mark trades off the good will associated with their mark may oppose your registration and/or your use of a mark. Most people serious about protecting their trademark rights register federally. Thus, a search of the Federal Trademark Registry is usually conducted. Very recent applications may not be found. Most abandoned applications are also listed. Some disputes over registrations are listed. Other possible searches include searching all of the state trademark registries, company name directories, internet domain names, and corporate name databases. A trademark search is a highly reliable, but not an infallible indicator, of use of a mark. Particularly, as we have discussed, someone may have common law rights that could not be found in any search. Any word search has limitations. For example, words of quite different spelling may sound similar. It is often difficult to find these in a search even though they may be considered to infringe.

What is the cost and time of a trademark search?
Search fees typically range from $250 to ~$1,600 depending on the mark and the extent of the search. A typical search takes 5-10 business days.

Are all marks used with goods or services registrable as a trademark?
No. Generic term marks are not registrable, because they are considered merely descriptive. Marks not inherently distinctive require evidence of secondary meaning (acquired distinctiveness) to be registrable. These include marks: geographically descriptive; personal names; corporate, business and professional names that fall into the preceding categories; and non-inherently distinctive designs, symbols, trade dress, packaging, product, and container shapes.

Will a federal registration allow me to use the mark on all products?
Not necessarily. Goods and services are classified into 45 classes, some examples: “toys and sporting goods”, “clothing”, "hand tools", "cosmetics", "furniture", "electrical and scientific apparatus" and “pharmaceuticals”. A registration provides protection for the classes in which you register.

How much is a federal trademark registration?
Total costs may vary from $750 to several thousand dollars; the costs rising if the mark is not already in use, the number of classes for which protection is sought, objections by the trademark examiner, or objections by other trademark holders.

How long does a federal registration last?
To maintain a registration, filings claiming continued use of the mark must be made at 5 years after registration and then every 10 years.

 

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