Trademark Law

A Trademark or service mark is a distinctive word, phrase, slogan, name, graphic symbol, picture, emblem, device, design, logo or any combination thereof which is used in commerce to identify and distinguish a company's products or services from that of another company and to indicate the source of the goods or services. A service mark does the same thing as a trademark, but instead of products, service marks identify services and events.

Trademark law governs the use of trademarks and service marks. Trademarks are a form of intellectual property. The law entitles the owner(s) to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or similar to the registered products or services, know as trademark infringement.

Trademark infringement occurs when one party adopts or uses a trademark that is confusingly similar to the prior adopted and used trademark for similar products or services. To prove infringement the mark's owner(s) must prove that the infringer's use of the mark has created a likelihood of confusion about the origin of the defendant's goods or services. The confusion created can be that the infringer's products are the same as that of the owner(s) or that the infringer is somehow associated, affiliated, connected, approved, authorized or sponsored by the owner(s). The necessity of the confusion element has been well established under both federal and state case law.

Trademarks are governed by both state and federal law. State common law originally provided the main source of protection of trademarks, but over time, federal trademark law has assumed much of the ground originally covered by state common law and now provides the main source of trademark protection. The main federal statute is the Trademark Act of 1946, as amended (the Lanham Act) which codified much of the existing common law on trademarks. The Patent and Trademark Office (PTO) is responsible for administering all laws relating to trademarks and patents in the U.S.

Rights to a trademark can be acquired by either being the first to register the mark with the PTO, or by being the first to use the mark in commerce, which provides protection at the state level by statute and/or common law. To obtain the greatest protection for a mark, it is usually advisable to register the mark. A mark which is registered with the PTO should be marked with the ® symbol. Unregistered trademarks should be marked with a "tm", and unregistered service marks should be marked with an "sm".

Trademark rights can be lost through improper licensing, assignment, genericity or abandonment. If the use of a trademark is licensed without adequate quality control or supervision by the trademark owner, the trademark will be canceled. And if the rights to a trademark are assigned to another party in gross, without corresponding sale of any assets, the trademark will be canceled. Genericity is when a trademark loses its distinctiveness over time and becomes generic, thereby losing its trademark protection. Trademark rights must be maintained through actual lawful use of the mark for a period of time, which varies, or rights to the mark will cease. In addition, if a mark's registered owner(s) fail to enforce the registration in the event of infringement, it may also expose the registration to become liable for an application for removal from the register after a certain period of time on the grounds of "non-use". Copyright

Trademark - Know Your Rights!

  • A Guide to Registering and Enforcing a Trademark

    Trademark law protects a word, phrase, symbol or design that is used to identify a product or service. Trademark owners can stop others from using their marks, because that may confuse a consumer. Trademark protection is governed by both federal and state laws.

  • Developing a Trademark in the USA

    Developing trademarks for brands is essential for companies and businesses in the United States. It is important to apply with the knowledge that a trademark takes certain steps, requires time and must be reapplied for once the initial time limit has passed.

  • How to Register a Trademark

    You own a business and have come up with a great new logo or phrase you want to use that will be synonymous with your company's place in the market. What do you do to protect it from others who might try to borrow from your company's reputation or good will in the market?

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