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What is a trademark?

Trademarks are designed to inform potential buyers (i.e. the public) WHO makes the goods or services on sale. Knowledge of WHO conveys information about a product or service’s attributes and quality. Consistent attribution of WHO is vital to both businesses and the public. Without a way of knowing who makes what, reputations cannot be created and evaluated, and the process of competition will be less effective. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. 543 U.S. 111 (2004). Until the enactment of the Lanham Act in 1946, United States trademark law was primarily common law. A common law trademark is acquired by simply using it. Why? The idea is that where one party has been labeling his goods or services with a distinctive mark so that purchasers would recognize his goods or services as being his, others are prevented from applying the same mark to their similar goods or services. If others weren’t prevented from applying the same mark, it would in effect represent their goods and services as his and would deprive him from the profit, reputation, and goodwill that flows from him. Trademark and related bodies of unfair competition law focus primarily on ensuring the integrity of the marketplace.

The Restatement of Law (Third) Unfair Competition §9 defines a trademark and service mark as follows: A trademark is a word, name, symbol, device, or other designation, or a combination of such designations, that is distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others. A service mark is a trademark that is used in connection with services.

Sounds simple, right?! It isn’t....There are lots of different caveats and intricacies to trademark law.

What can be trademarked?

Many things used to distinguish a business from other businesses can be trademarked. For example:

  • Business name

  • A product name

  • A logo or label

  • A product package

  • A symbol or design

  • And even a color or sound

How to get trademark protection?

To get trademark protection you use a trademark in connection with the sale of goods or services. Simple, right?! Well, ideally yes, it is that simple. But, of course, there are lots of different elements to trademark law that may prevent you from obtaining trademark protection even with your use of the mark. Using a trademark in connection with the sale of goods or services without registering the mark with the United States Patent Office (USPTO) may provide you with common law trademark protection. If you register the mark with the USPTO, you received federal trademark protection.

If you are able to obtain federal register your trademark with the USPTO you can obtain additional benefits including nationwide protection.

Does my trademark expire?

Under common law, NO, as long as you are using it! Under federal law, a Federal trademark registration lasts for ten (10) years but is renewable. Each renewal provides you with an additional ten (10) year period with no limit on the number of renewals. The key to trademark protection is its continued use and maintenance. As long as you use and maintain control of the trademark, your trademark is protected under common law and federal law if it is registered with the USPTO.


What’s the difference between common law trademark protection

and federal trademark protection?

Common Law Trademark Protection: If you have been using a mark but have never registered it, your mark may have protection in common law. This means you may be able to prevent others from using your mark IF you can show that you used it first. However, common law trademarks rights may be limited to the geographic area where you do business. Additionally, common law trademark rights is state specific. Each state has common law trademark rights and depending on the state, your rights may be different. Common law trademarks can be recognized with the ™ symbol.

Expiration Date: Common law trademark may last as long as you continue to use the mark in commerce. However, if you fail to enforce your rights (i.e. prevent others from using your mark) you may lose your rights. Note: Some states have their own trademark registration options which are governed by state law and vary from state to state.

Federal Trademark Protection: To received federal trademark protection, you must register your mark with the USPTO. If you obtain federal registration, you may be able to prevent others from using your mark anywhere in the United States. (i.e. Federal trademark registration provides you with nationwide territory.) In addition to the nationwide territory, federal registration provides some additional benefits like federal court jurisdiction, bars to importation of infringing goods, and more. Federal trademarks are identified the ® symbol.

Expiration Date: Under federal law, a Federal trademark registration lasts for ten (10) years but is renewable. Each renewal provides you with an additional ten (10) year period with no limit on the number of renewals.


Looks Like A Duck, Walks Like A Duck, Sounds Like A Duck, It Is A Duck.

Since the whole purpose of trademarks is to distinguish protects, trademark protection not only prevents others from using your exact trademark but also prevents other from using any mark that is likely to be confused with your mark. This means that a business cannot use a mark that looks or sounds similar, or has a similar meaning, to yours, especially if the goods or services are related. There are many different types of confusion when it comes to trademark, but each has the overall goal to prevent confusion in the marketplace.


To learn more about trademarks, please contact us! We would be happy to answer any of your questions.


Law Office of Jonathan E. Fortman, LLC

www.fortmanlaw.com

314-522-2312

jef@fortmanlaw.com

kms@fortmanlaw.com