Trademarks and the Law

June 5, 2008 — 823 views  

Federal registration that protects your company's name, logo, or image is increasingly important today as Internet usage grows.

Trademark registrations continue to rise as companies seek to protect their rights and as individuals expand their entrepreneurial enterprises. Use of the Internet and alternative media is rapidly changing the accessibility of information, and further expanding the issues surrounding trademark law. Understanding the key components of trademark law can help you and your company avoid costly legal battles.

Trademarks Defined
A trademark is any word, name, symbol or device used to identify and distinguish the goods of one manufacturer or seller from another. Trademarks are brand names that allow others to associate the product or service with its source.

A service mark is any word, name, symbol, device or any combination, which is used to identify and distinguish the services of one provider from services provided by others. Service marks indicate the source of the services rather than an actual product.

The term trademark is often used to include both service marks and trademarks.

Trademark Protection
There are three kinds of trademark protection currently available:
Federal, state, and common law.

Federal
Federal registration with the United States Patent and Trademark Office grants exclusive right to use a mark in connection with particular goods or services throughout the United States. Currently, the non-refundable application fee for filing a Federal trademark registration is $325 plus various miscellaneous costs during the registration process.

State
In Pennsylvania, the Department of State allows registration of a trademark in order to protect rights within the state. By sending the required documents and a fee, the state will grant registration that lasts for five (5) years. This helps solidify trademark rights within the state of Pennsylvania, but has no effect on rights elsewhere.

Common Law
Rights in a mark may be established just by use of the mark in a particular manner, in a particular area. While common law rights in a mark may be present they are limited to a geographic area of use, are often difficult to prove, and are not nearly as strong as Federal or state registration.

Why Register for Federal Trademark Protection?
Trademark rights arise by the mere use of a mark to identify goods or services, but these rights in the mark are limited to the geographic area in which the mark is used.

Federal registration with the United States Patent and Trademark Office grants an exclusive right to use a mark in connection with those particular goods or services throughout the United States. Federal registration also gives notice to others of your rights in the mark across the country. The very fact that a mark is Federally registered is often enough to discourage others from using it, thus strengthening the association of a particular mark with your product or service. Having an active Federal registration is also the only time you are permitted to use the ® symbol.

What Can Be Trademarked?
Trademarks consist of various types and styles of words, logos, drawings, etc. For Federal registration, the mark must be used in interstate commerce, which generally means within more than one state.

If you are currently using your mark in the United States in interstate commerce, you may be able to apply for Federal registration now.

If you have yet to use the mark but are intending to, you may file an
"Intent to Use" application. An Intent to Use application must eventually be supplemented to affirm that you have begun to use it. Therefore, you should wait to apply for registration of a mark until your intent to use the mark is relatively near, generally within 18 months of the application date.

With certain types of applications and when submitting supplementary documents, a specimen of the mark must be offered. A specimen is an example of how the mark is actually used and often consists of labels, tags, containers, advertising or brochures.

The Registration Process
Trademark applications undergo a lengthy examination period by the United States Patent and Trademark Office. Once an application is filed, the Trademark Office usually does not assign it to an examiner or respond for at least six months. After that time, the length of the examination period will depend on supplements or additions made to the application, the discretion of the examiner, and any legal issues that may arise. Some trademarks are registered within 12–18 months of the application filing date.

Trademark registrations have a term of ten (10) years and may be renewed for successive ten-year periods. Close to the end of the ten-year period, renewal forms and applications must be submitted. It is also important to be aware of other requirements necessary to keep the registration active, such as the required filing of supplemental forms between the fifth and sixth year following registration.

While anyone may file trademark applications, knowledgeable attorneys should assist with the process due to the complicated and strict rules and regulations.

MacElree Harvey
17 West Miner Street
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West Chester, PA 19381–0660
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MacElree Harvey