Introduction To Trademarks and Trademark Law
In this trademark section of the articles division you will find information on what can be trademarked, how to choose a good trademark, the trademark registration process, marketing (licensing) your trademark, protecting your trademark, and trademark infringement. You will also find articles about special issues such as domain names, corporate names, etc... This particular article, however, seeks to provide a brief overview of the main topics.
What is a Trademark
In short a trademark is a brand name or slogan that identifies your product or service. It can be a word, name, symbol, device, phrase, slogan, logo, sound, or any combination thereof whose primary purpose is to identify a product or service and distinguish it from those of another. For simplicity sake, we will refer to these items as a "mark". When the mark refers to a product it is called a trademark. When the mark refers to a service, it is called a service mark. When the mark entails a product's packaging, shape, or appearance it is called trade dress.
Naming a product well or having a new corporate logo designed may be one of the most critical steps you take when starting a new business, or begin offering a new product or service. Likewise failure to do so properly can be a great hazard. California alone has over 80,000 active marks and the United States Patent and Trademark Office is said to have over 1,000,000 live marks. Selecting a name that either fails to meet the requirements for registration, or infringes another's active mark can lead to a very costly trademark infringement lawsuit.
What Makes A Trademark Registerable
To qualify as a trademark, a product name (logo, design, symbol, etc...) or name associated with the provision of a service must be: (1) used in commerce and either: (1) distinctive or (2) famous due to continuous use and prominent national customer recognition.
To be distinctive the mark must not be generic or descriptive of the product of service to which it represents. Most often, businesses who fail to seek the advice of competent counsel select a name that is either purely, or somewhat, generic and descriptive. This can pose a huge problem because when such is the case the owner of the generic and descriptive name cannot prevent others from using the name. So how do you pre-select a good name? Briefly, arbitrary, fanciful, and coined marks are best. These are either actual words that exist in the dictionary, or made up words, that have absolutely no connection to the related goods or services. Suggestive marks are also okay, but less favorable. A suggestive mark is a word that can be associated with the impression your product or service seeks to make. For example, Ford Motor Company selected the name (mark) "Mustang" for an automobile it wanted to promote as fast and sleek.
Trademark Registration
Trademark registration can be attempted at the state or federal level, or both. Where your product or service has been advertised and provided in more than one state it may behoove you to register your mark at both the state and federal level. State registration generally can be accomplished in 2 to 6 weeks, whereas federal registration generally takes up to 22 months.
Licensing A Trademark
Once you have federally registered your mark, and received a valid registration certificate, trademark law will grant you the privilege of
enjoying the benefits of your own commercial reputation and prohibiting others from taking a free ride on your good name. However, you can also exploit your trademark and the good will attached to it, by licensing it to others. This license can be a non-exclusive or exclusive license and it can be limited in an indefinite number of ways - by product/service, territory, time, etc...
Trademark Infringement
Trademark infringement occurs where an individual or company begins using a mark that is either the same, or "confusingly similar", to another company's name, logo, etc.. that was previously in existence.
In California alone there are presently 80,000 active marks and according to the United States Patent and Trademark Office there are presently over 1,000,000 active federal trademarks. So needless to say it is easy to unknowingly infringe another person's trademark. For this reason we strongly recommend that you contact an attorney familiar with trademark law before proceeding to use a company name, trade name, domain name, or trademark. For relatively little money you can reduce your chances of infringing another's mark significantly.
