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TRADEMARKS You
can register your trademark with the United States Patent and Trademark Office
if it is used in interstate commerce. If
it is used exclusively in New Jersey, you may register it with the New Jersey
Secretary of State. A
trademark is different from a copyright or a patent.
A copyright protects an original artistic or literary work; a patent
protects an invention. People
sometimes confuse the organization of a business under a particular name with
establishing trademark rights in that name.
Incorporating your business under a particular name or similar such
business organizations do not in themselves establish trademark rights against a
competitor already using the same name or a confusingly similar name.
Sometimes business owners believing they have rights in a name will spend
substantial sums promoting their business name only to find that a competitor
has the right to prevent them from using that name. Establishing
Federal Trademark Rights Trademark
rights arise from either (1) actual use of the mark, or (2) the filing of a
proper application to register a mark in the Patent and Trademark Office (PTO)
stating that the applicant has a bona fide intention to use the mark in commerce
regulated by the U.S. Congress. Federal
registration is not required to establish rights in a mark, nor is it required
to begin use of a mark. However, federal registration can secure benefits beyond
the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed
to be the owner of the mark for the goods and services specified in the
registration, and to be entitled to use the mark nationwide.
There
are two related but distinct types of rights in a mark:
the right to register and the right to use. Generally, the first party
who either uses a mark in commerce or files an application in the PTO has the
ultimate right to register that mark. The
PTO's authority is limited to determining the right to register. The right to
use a mark can be more complicated to determine.
This is particularly true when two parties have begun use of the same or
similar marks without knowledge of one another and neither has a federal
registration. Only a court can
render a decision about the right to use, such as issuing an injunction or
awarding damages for infringement. Federal
registration can provide significant advantages to a party involved in a court
proceeding. Unlike
copyrights or patents, trademark rights can last indefinitely if the owner
continues to use the mark to identify its goods or services.
The term of a federal trademark registration is 10 years, with 10-year
renewal terms. However, between the
fifth and sixth year after the date of initial registration, the registrant must
file an affidavit setting forth certain information to keep the registration
alive. If no affidavit is filed,
the registration is canceled. Types
of Applications for Federal Registration An
applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in
commerce may file based on that use (a "use" application).
(2) An applicant who has not yet used the mark may apply based on a bona
fide intention to use the mark in commerce (an "intent-to-use"
application). For the purpose of
obtaining federal registration, commerce means all commerce which may lawfully
be regulated by the U.S. Congress, for example, interstate commerce or commerce
between the U.S. and another country. The
use in commerce must be a bona fide use in the ordinary course of trade, and not
made merely to reserve a right in a mark. Use
of a mark in promotion or advertising before the product or service is actually
provided under the mark on a normal commercial scale does not qualify as use in
commerce. Use of a mark in purely
local commerce within a state does not qualify as "use in commerce",
but you may then register with the New Jersey Secretary of State instead of the
Patent & Trademark Office. If
an applicant files based on a bona fide intention to use in commerce, the
applicant will have to use the mark in commerce and submit an allegation of use
to the PTO before the PTO will register the mark (See page 12). (3) Additionally, under certain international agreements, an
applicant from outside the United States may file in the United States based on
an application or registration in another country. A
United States registration provides protection only in the United States and its
territories. If the owner of a mark
wishes to protect a mark in other countries, the owner must seek protection in
each country separately under the relevant laws. Who
May File an Application? The
application must be filed in the name of the owner of the mark; usually an
individual, corporation or partnership. The
owner of a mark controls the nature and quality of the goods or services
identified by the mark. Foreign
Applicants Applicants
not living in the United States must designate in writing the name and address
of a domestic representative -- a person residing in the United States
"upon whom notices of process may be served for proceedings affecting the
mark." The applicant may do so
by submitting a statement that the named person at the address indicated is
appointed as the applicant's domestic representative under §1(e) of the
Trademark Act. The applicant must
sign this statement. This person
will receive all communications from the PTO unless the applicant is represented
by an attorney in the United States. Searches
for Conflicting Marks While
an applicant is not required to conduct a search for conflicting marks prior to
applying with the PTO, it is prudent. This
is because in evaluating an application, the PTO examining attorney conducts a
search and notifies the applicant if a conflicting mark is found.
The application fee, which covers processing and search costs, will not
be refunded even if a conflict is found and the mark cannot be registered.
Therefore, the best course is to conduct a search before attempting to
file the trademark application in order to determine whether there are other
trademarks being used which are the same or confusingly similar to that which
you seek to register. To
determine whether there is a conflict between two marks, the PTO determines
whether there would be likelihood of confusion, that is, whether relevant
consumers would be likely to associate the goods or services of one party with
those of the other party as a result of the use of the marks at issue by both
parties. The principal factors to be considered in reaching this decision are
the similarity of the marks and the commercial relationship between the goods
and services identified by the marks. To
find a conflict, the marks need not be identical, and the goods and services do
not have to be the same. Use
of the "TM," "SM" and "®" Symbols Anyone
who claims rights in a mark may use the TM (trademark) or SM (service mark)
designation with the mark to alert the public to the claim.
It is not necessary to have a registration, or even a pending
application, to use these designations. The
claim may or may not be valid. The
registration symbol, ®,
may only be used when the mark is registered in the PTO.
It is improper to use this symbol at any point before the registration
issues.
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