View our FAQs about trademark protection to learn more about the process of obtaining trademark rights.

What's in a Name?

Trademarks are essential to any business. Every business that has a name, from a mom-and-pop to the largest corporation, has already acquired common law trademark rights in its name. One of the differences between a well-advised business and others lies in how well the business has protected its name. Registering one’s trademark rights should be considered essential for any business. Imagine conducting business for a period of years under a particular name only to find out that a previously unknown competitor with a confusingly similar name has expanded into your area. Even worse, the competitor has prior rights and you may now be forced to change your name or be limited to your existing geographic area. Your customers may have difficulty finding you or may believe that you are now under different ownership. Years of goodwill built up in your name may be lost. Protecting a trademark is generally inexpensive, and certainly less expensive than a trademark dispute.

Polster, Lieder, Woodruff & Lucchesi’s Trademark Practice

Polster, Lieder’s trademark practice is focused on four primary areas:

1. Obtaining Trademark Protection

Polster, Lieder attorneys have assisted their clients in protecting their most valuable asset, their name, since 1879. All of our partners and associates dedicate a significant portion of their practices to trademark protection.

2. Protecting Foreign Rights

Polster, Lieder attorneys can assist their clients in extending their U.S. trademark rights into foreign countries. For example, through an international treaty called the Madrid Protocol, Polster, Lieder attorneys can seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application”, in the U.S. In other instances, where the Madrid Protocol is not the strategically best way to extend the client’s rights, Polster, Lieder attorneys can utilize their network of foreign associates in the appropriate countries to seek the broadest rights possible.

3. Infringement Avoidance and Licensing

A very important part of obtaining trademark rights is performing a trademark search. A trademark availability search should be performed prior to beginning use of a new mark. The search will help determine if a proposed mark is already in use or if a confusingly similar mark exists for related goods and/or services. Polster, Lieder attorneys can perform the required searching through our electronic databases of federally registered marks, state marks and through proprietary databases of common law marks to help prevent a client from adopting a mark already in use.

4. Prosecuting and Defending Trademark Suits in the Courts

In the event that you discover an infringing use of your mark or someone accuses you of infringing their mark, Polster, Lieder attorneys can assist you in resolving the dispute. Polster, Lieder attorneys have successfully prosecuted and defended many trademark suits in state and federal courts and have successfully prevented the issuance of injunctions against their clients’ use of marks and obtained injunctions against others on behalf of their clients against infringing uses of their clients’ marks. Additionally, Polster, Lieder attorneys work with the U.S. International Trademark Commission to keep infringing products from entering the country.

Trademark FAQs

1. What is a Trademark?
2. What is a Service Mark?
3. What is a Trade Name?
4. How long does a trademark registration last?
5. What are the various types of trademarks?
6. What is a common law trademark? Do I have to register my trademark to have rights?
7. What is a state-registered trademark?
8. What is a federally registered trademark?
9. I have filed my papers for incorporation or for an LLC or for a fictitious name registration, does that give me trademark rights?
10. How do I obtain a federal trademark?
11. What do the ^®, ^TM or ^SM symbols mean?
12. Can I file my own trademark registration?
13. Are some marks better than others for serving as trademarks?
14. I have the unqualified right to use my name as a trademark, right?
15. Is there any way I could lose my mark even though I have continued to use it?
16. What is trade dress? Can I get a trademark on the shape of a product?
17. What is the difference between a design mark and a word mark?
18. Can a sound be a trademark?
19. Can a color be a trademark?

What is a Trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Also, things other than words or designs, such as sounds, smell, color, product configuration and product packaging can be trademarks if capable of designating the source of the goods or services with which it is used. The color pink as used on fiberglass insulation by the Owens-Corning Company, the famous NBC chimes for the NBC Broadcasting Co., and the shape of the classic Coca-Cola bottle are examples of such other marks. In short, a trademark is anything that the public will associate with the maker of the goods upon which it is used.

Trademarks are different from patents and copyrights. Patents protect inventions. For more on patents click here. Copyrights protect original works of authorship (computer code, songs, books, sculptures, movies, etc.). For more on copyrights click here.

What is a Service Mark?

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this FAQ, the terms "trademark" and "mark" refer to both trademarks and service marks.

What is a Trade Name?

A trade name is the name of a company. If the trade name is used to identify a product or service, then the trade name is also a trademark or service mark. However, if the trade name is used only as a company name and is not used to identify a product or service, then the trade name is not a mark. For example, the company name or trade name Apple Computer is also a trademark. However, Geoffrey, Inc. which owns the TOYS "R" US stores is only a trade name. Because it is not used to identify its Toys "R" Us stores, the name Geoffrey is not a trademark or a service mark.

How long does a trademark registration last?

Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the U.S. Patent & Trademark Office at the appropriate times.

What are the various types of trademarks?

1. common law trademarks
2. state trademarks registrations
3. federal trademarks registrations

What is a common law trademark? Do I have to register my trademark to have rights?

A common law trademark is a trademark that someone has begun using on a product or with a service without registering it. Common law rights in the trademark arise through use of the mark. Common law rights are limited to the places where the product or service bearing the mark has become known, generally, where it has actually been marketed. Therefore, while common law rights provide the user of the mark with some rights, common law marks do not prevent others from adopting the same mark for similar goods or services somewhere else. If the mark is used in interstate commerce, infringement actions can be brought in the Federal Court system

What is a state-registered trademark?

A state trademark registration is obtained by filing proper documents with the secretary of state for the state in which you are registering the mark. A state trademark registration usually gives you rights throughout the state in which you are registering despite the fact that you may only be marketing your product or service in a portion of the state. Therefore, if you use your trademark outside of the state in which you are registering, you must rely upon your common law rights outside that state. Most states require that you actually begin use of the mark in the state before you can register it there.

Oftentimes, people assume that they have filed for trademark rights when they file a fictitious name registration or when they set up a corporation or an LLC with their secretary of state. None of these acts does anything to establish rights in a trademark.

What is a federally registered trademark?

A federal trademark registration provides the strongest protection for your mark. Owning a federal trademark registration provides several advantages:

• constructive notice to the public of the registrant's claim of ownership of the mark;
• a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• after five years continued and exclusive use, the mark becomes incontestable to many defenses;
• the ability to bring an action concerning the mark in federal court, where the federal registration is prima facie evidence of ownership and use;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Trademarks can be registered federally if the mark has already been used on goods or services in commerce. An application for a federal registration can be filed even if the mark is not in use if the applicant has a bona fide intent to use the mark on goods or services in the future. However, in such an “intent-to-use” application, a registration will not be issued until use of the mark has begun.

Federal law also requires that the mark be used “in commerce that Congress may regulate.” Generally, this includes state-to-state commerce, commerce with foreign countries, and commerce with U.S. possessions. It also includes intrastate commerce if the commerce has “an effect” on interstate commerce. This is generally an easy criterion to meet. Consult an attorney experienced in trademark matters if you have a single state business and you want to determine whether you can file a federal trademark registration.

I have filed my papers for incorporation or for an LLC or for a fictitious name registration, does that give me trademark rights?

No. Oftentimes, people assume that because they have filed the paperwork to set up a fictitious name, a corporation or an LLC with their secretary of state, that they have registered their mark. However, a fictitious name registration or a corporate or LLC name registration is not a trademark or service mark registration. A separate application must be filed either with the state (in the case of a state registration) or with the United States Patent & Trademark Office (in the case of a federal registration) to register your rights in the mark.

How do I obtain a federal trademark?

First, you should perform a search to determine if others are using the same or similar marks on related goods or services. If others’ marks are too close, you should consider a different mark. See below for information on selecting a mark.

Next, a federal trademark registration application is filed. The application has several parts that need to be completed correctly. Mistakes on the application can be fatal to your application or subsequent registration. The Examining Attorney in the Patent & Trademark Office will do a search to determine if there are any confusingly similar registrations or prior filed applications and if your trademark is generic or descriptive of the goods or services set forth in the application. See below for information on selecting a mark and for an explanation of “generic” and “descriptive” as it relates to trademarks.

If the examining attorney rejects your application, you will need to present arguments to overcome the rejection.

If the examining attorney does not reject your application or accepts your arguments made in response to a rejection, your application will be published in the Trademarks Gazette. Publication starts a 30-day period during which others can file an opposition in an attempt to prevent you from obtaining a registration. Such an opposition can be based on a federal registration, a state registration, or a common law (i.e., unregistered) mark.

After the opposition period expires, the application will, in the case of an actual use application, issue as a registration. In the case of an “intent-to-use” application, a notice of allowance will be issued, and you will have 6 months to file a statement of use or an extension of time to file the statement of use. Up to five 6-month extensions of time can be filed. If, at the end of the fifth extension of time (3 years after the notice of allowance) you still are not using the mark, the application will lapse.

Between the fifth and sixth year after issuance of a registration, affidavits need to be filed to maintain the registration. Your trademark attorney should docket those dates to ensure that the proper documents are filed. Failure to file the required documents will result in the loss of your registration.

What do the ®, TM or SM symbols mean?

"^®" means that the mark is a federally registered trademark.

The ^TM or ^SM symbols mean that the trademark owner is claiming common law trademark rights in the mark and/or that the mark is a state registered mark.

While it is not illegal per se to use the “^®” symbol with a mark that is not federally registered, such use often has consequences that make the use of the symbol at best undesirable.

Can I file my own trademark registration?

You can, but keep in mind that mistakes in the application can be fatal and you may not find out about the mistake until you go to stop someone else from infringing your mark. Also, if the required affidavits and renewals are not filed on time, your registration will lapse. An attorney should docket those dates and remind you years after your registration that the documents are due.

Are some marks better than others for serving as trademarks?

Yes. The touchstone for a trademark is distinctiveness--the mark must indicate to the public a single entity responsible for the quality of the product or the service, NOT what the product or service is. There is a sliding scale of trademark distinctiveness.

Generic marks. Although the term is used occasionally by the courts, it is an oxymoron; if it is generic it is not a trademark. It describes exactly what the product or service is and cannot be registered. For example, the term APPLE is generic for apples, but not for computers. The reason generic marks cannot be registered is simple-- no person should have the right to prevent others from describing what their goods or services are. In this instance, no one person has the right to stop others from calling apples "apples".

Descriptive marks immediately describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. For example, APPLE is descriptive of an air freshener because it describes a quality (namely the aroma) of the air freshener and is not registrable without a showing that the mark has gained trademark significance in the minds of consumers ("secondary meaning"). "Secondary meaning" is acquired through long use or extensive advertising. "Secondary meaning" is presumed to have been acquired if the mark has been used continuously and exclusively for five years. An example of a descriptive mark that has acquired distinctiveness such that it is registrable is THE PASTA HOUSE for restaurant services featuring Italian food. Marks can also be considered descriptive if they are primarily geographic terms, such as MISSOURI BANK or AMERICAN PLUMBING.

Suggestive marks are marks that do not immediately describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Apple is suggestive when used in the mark APPLE JACKS for breakfast cereal and is, therefore, registrable.

Arbitrary and fanciful marks are the strongest trademarks and do not describe or suggest any aspect of the products. Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER). Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).

I have the unqualified right to use my name as a trademark, right?

No, you don't. If someone else has adopted your name as a trademark, you cannot use your name as trademark on similar goods or services. For example, if your last name is McDonald, you do not have the right to start up a restaurant named MCDONALD'S.

Is there any way I could lose my mark even though I have continued to use it?

First of all, you could lose your state or federal registration if you fail to file the proper documents, such as renewals, on time.

Second, you could lose all of your rights in a trademark if the mark becomes generic for your product. That is, if people begin to consider your trademark as describing what your product is, rather than who makes the product, it becomes generic. Examples of two terms that used to be trademarks but became generic are the terms "aspirin" and "escalator". Today, companies still fight to keep their marks from becoming generic, for example ROLLERBLADES is a mark that many people associate with inline skates even though it is the trademark of a single company.

What is trade dress? Can I get a trademark on the shape of a product?

Yes, you can, if the shape has gained significance in the minds of the relevant purchasing public of the product or service such that they identify the product with a single source. Recent court rulings have made it more difficult to obtain a product configuration mark. However, product shapes, like the shape of a classic Coke bottle, are trademarks. If you believe you have a product with a distinctive appearance that the public associates with a single source, you should consult a trademark attorney.

What is the difference between a design mark and a word mark?

A design mark is a mark that incorporates a design element (i.e., a logo). An example of a design mark is Sanyo Fisher’s “BIRD-IN-NOTE” design mark shown below for use with consumer audio and video products.

A word mark is a word either in standard characters or in a stylized font. An example of a word mark is Brown Shoe’s BUSTER BROWN mark for use with footwear.

A composite mark includes both a design element and a word element. An example of a composite mark is Brown Shoe’s BUSTER BROWN and DESIGN mark shown below for use with footwear.

 If you have a composite mark in which the word element is distinctive, the mark can be covered by three registrations: a registration to the composite mark, a registration to the design element of the mark, and a registration to the word element of the mark. If the word element is in a stylized font, a fourth registration could be filed to the word element in the stylized font, although registration of the word mark in block form covers its use in any font or form.

Can a sound be a trademark?

Yes. A sound can be a trademark if is inherently distinctive or has become distinctive in the minds of consumer as representing a source of the trademark owner's goods or services. An example is the NBC chimes.

Click here to hear the mark.

Can a color be a trademark?

Yes. A color can be a trademark if it is inherently distinctive or has become distinctive in the minds of consumers as representing a source of the owner’s goods or services. For example, Owens Corning registered a color as a trademark when it registered the color pink for “fibrous glass residential insulation”.

Firm Profile | Our Attorneys | Patents | Trademarks | Copyrights | News | FAQs | Recruitment | Contact Us

© 1999-2009 Polster, Lieder, Woodruff & Lucchesi, L.C.
Disclaimer
Site Designed by The Net Impact