How long does a trademark last?
Rights in a trademark will exist so long as the mark is used.
However, once a trademark is abandoned, all rights in it can be
lost and any other person may begin using the mark and acquire
rights therein. A federal registration lasts for 10 years and
can be renewed for subsequent additional 10 year terms.
How do you get rights in a trademark?
Rights in a trademark are acquired throughout a geographical
area through use of the mark in association with the goods or
services. ownership of a trademark prevents others from using
a similar mark for goods or services which would create a likelihood
of public confusion as to the source or sponsorship of the respective
goods or services. Public confusion is determined by the similarities
of the respective marks and the similarities of the goods or services,
as well as the channels of trade in which the goods or services
are:marketed.
Mere use of a trademark will create common law rights for
the geographical area in which it is used and a state registration
may be obtained giving state-wide protection; however, if a mark
is used in interstate commerce, then the mark may be federally
registered and thereby acquire significantly broader federal rights.
A major change in U.S. trademark law went into effect on November
16, 1989. Whereas prior to this date, one could file a U.S. application
only if the mark was actually being used, the new law allows applications
to be filed with the U.S. Patent and Trademark Office based on
a declared bona fide intent to use the mark. The application
will be examined like any other application; however, if allowed,
the registration will not issue until a declaration of actual
use is filed with the U.S. Trademark Office.
How do you select a trademark?
Before selecting a trademark or servicemark there is a test
that should be performed that is used by trademark attorneys and
the court system when comparing marks. Most people who need to
come up with a trademark try to include some words that have some
to do with the product. This makes common sense, since it is easy
and the mark will relate to the directly to the product. Under
trademark law, however, this is absolutely the worst approach
to picking a mark. The real story is the less a mark has to do
with anything even remotely related to the product the stronger
the mark will be when it is first introduced to the market. The
reasoning for this is the ultimate test of the strength of a mark
is its distinctiveness in the mind of the consumer. If a mark
incorporates words that are descriptive of the product, then it
cannot be strong, at least not initially. The public will not
immediately associate the product as coming from a certain manufacturer,
but must eventually sort out that mark from others like marks
or descriptions of products. A mark that does contains some words
that are descriptive of the product can become strong, but it
is a costly, uphill fight. A good example of this is the well-known
mark "International Business Machines." Notice that
every term in the mark is descriptive in some way of the product.
If this were a new company today, this would be considered a non-inherently
distinctive mark. In order to gain a mark that is protectable,
the mark must gain recognition that the mark, in additional to
its literal meaning, has acquired a secondary meaning, that is
indicating the source of a product. This recognition is usually
gained through advertising and marketing; the more widespread
the better. There are, however, other factors that may impede
this effort, such as other similar marks. It is very difficult
to rise above a crowd in this case. It is far, far better to start
with a good well chosen mark, which has been thoroughly researched
than to fight this battle and possible litigation. Remember, if
you are a start-up business, you cannot afford to get into a lawsuit.
Here are some of the factors to consider when selecting a trademark:
What are good trademarks?
"Arbitrary " marks consists words that are in everyday
usage but in no way describe a particular quality of the product.
Examples include ARROW for shirts, MUSTANG for cars, SUN for a
bank, APPLE for computers. All of these marks have a dictionary
meaning, but that meaning is in no way descriptive of any quality
of the product or service. This category has the advantage that
these are strong marks in that they are inherently distinctive
and protectable. Also, it relatively easy to select an arbitrary
mark, but you still have that problem marketing preference for
marks that are easy to tie into a product.
"Fanciful" marks can be made-up or coined words
that have no meaning in our language, but are purely design to
be a trademark. A classic example is the mark "KODAK"
which has no meaning whatsoever. This type of mark is considered
to be the most distinctive. It is extremely easy to enforce in
its own product line and can be enforced in any product line in
which the company might logically enter in the future. The only
problems with these types of marks is that they are very difficult
to coin. Also marketing departments usually tend to like marks
that contain some words relevant to some quality of the product.
It is always a battle between the trademark attorney, who wants
a mark that is easy to defend and the marketing people. Consequently,
there are not that many marks that fall into this category. Some
include CLOROX, EXXON and POLAROID. Some others were in this category,
but because the public began using them as generic terms they
are no longer considered to be trademarks, for example Aspirin,
Cellophane and Escalator. Currently, XEROX is fighting the battle
against their mark becoming a noun or a verb.
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What are the problem trademarks that should be avoided?
How long does a trademark last?
Rights in a trademark will exist so long as the mark is used.
However, once a trademark is abandoned, all rights in it can be
lost and any other person may begin using the mark and acquire
rights therein. A federal registration lasts for 10 years and
can be renewed for subsequent additional 10 year terms.
How do you get rights in a trademark?
What is the process to register a trademark?
What does the procedure cost?
Can I accelerate the registration procedure?
What is the value to my company in registering its trademarks?
The most valuable asset of many businesses is its ownership of
the trademarks that it has developed. Without the exclusive rights
to use certain trademarks a company would have to rely upon the
public's recognition that the product itself came from a certain
supplier. This is unrealistic. Products are constantly coming
into or going out of the market. It is the mark on various products
that gives the buying public a clue as to who is the source of
a product and the quality that the buyer can expect from that
company. In a crowded marketplace a company's trademark and the
reputation for quality that it signifies may be the only distinguishing
featureof that company's products. In many ways a trademark can
become the essence of the company and what it stands for. This
is the reason that established companies systematically obtain
federal protection for every trademark or trademark variation
that they develope. Today a company can begin obtaining protection
even before they begin using a mark. Upon registration and sometimes
upon filing an application the company can obtain priority, nationwide,
to use a certain trademark. By knowing how to obtain, use and
protect trademarks a company can secure its most valuable asset
and gain a competitive advantage in the marketplace.
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How can a registration help my company compete?
Second, in a competitive business climate a company needs every
advantage that it can obtain. This includes maximizing it use
of the trademark laws to protect one of its most valuable assets,
both offensively and defensively. A company, which obtained a
federal registration of its trademark, has the right to go to
a federal court with the enormous advantage of having the court
presume that the company is right and that the accused infringer
is wrong. The accused party has the burden of changing the court's
presumption and to prove that company is wrong. Usually this is
very difficult to do.
Also a registered trademark may also be used to stop the importation
of products at the border. The U.S. Customs Service can be required
by the trademark owner to seize and detain any merchandise that
bears, copies or simulates a registered trademark. A trademark
owner simply needs to record its federal registration with the
Customs Service and it will monitor and seize any goods bearing
a counterfeit of a recorded mark or one which so resembles it
as to be likely to cause the public to associate the importer's
mark with the recorded mark.
Another way that a trademark registration may be used a tool is
to block any other party from obtaining a registration. If a company
begins using a trademark but not obtain a federal registration
, then another company can freely use the mark in its own market
area. Worst yet that company can go ahead and file for a federal
registration and then turn around block any attempt by the first
company to obtain a federal registration. Furthermore, once the
second company has a registered mark it can stop the first company's
expansion of the use of its mark into new market areas.
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Trademark is often the only long term form of protection for a
product. There are other forms of protection such patents rights
or rights to the trade dress of a product. Both of these
rights have their own limitations. Assuming that a product contains
a patentable idea on which a patent is obtained, it will give
its owner the right to prevent others from using the same concept
in their products. This right, however, only lasts for a period
of twenty years from the filing of an application. After that
time the idea may be freely used by anyone. Unless a company is
constantly developing new ideas and obtaining new patents for
its products they will not have any protection. It frequently
occurs that a perfectly good product will outlive its patent.
Trademarks, however, can live forever. If the owner of a mark
is diligent in using and protecting its trademarks, those marks
will last as long as they being used. There is no time limitation
on the rights to a certain trademark.
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Proper use of one's trademarks and service marks is extremely
important, because improper use can result in the loss of rights.
It must be remembered that a trademark, by indicating the source
of the goods, must be used as an adjective modifying the generic
name of the product (e.g. KODAK cameras, BUDWEISER beer); and
the trademark should not be used as the name of the product itself
(e.g. buy a kodak, or drink a budweiser). When a trademark is
used, it should be written in some distinctive form to set it
off from the other words; this can be done by capitalizing the
first letter, capitalizing all the letters, or printing the trademark
in different type.Further, it may be desirable, when using trademarks
that may be somewhat descriptive or suggestive of the nature of
the product to use a small "tm" immediately to
the lower right of the trademark to indicate the fact that you
are using the word as a trademark. However, if you have
obtained a federal registration for the trademark then you may
use the symbol ® adjacent to the mark, or the words "reg.
in U.S. Patent and Trademark Office."