WHAT IS A TRADEMARK OR SERVICEMARK?

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark,” “mark” and “service mark” are often used interchangeably. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks, which are used in interstate or foreign commerce, may be registered with the United States Patent and Trademark Office (USPTO).

Trademarks are generally distinctive symbols, pictures, or words that sellers affix to distinguish and identify the origin of their products. Trademark status may also be granted to distinctive and unique packaging, color combinations, building designs, product styles, and overall presentations. It is also possible to receive trademark status for identification that is not on its face distinct or unique but which has developed a secondary meaning over time that identifies it with the product or seller. The owner of a trademark has exclusive right to use it on the product it was intended to identify and often on related products. Service-marks receive the same legal protection as trademarks but are meant to distinguish services rather than products.

In the United States trademarks may be protected by both federal laws under the Lanham Act, 15 U.S.C. §§ 1051 - 1127, and states’ statutory and/or common laws. Congress enacted the Lanham Act under its Constitutional grant of authority to regulate interstate and foreign commerce. A trademark registered under the Lanham Act has nationwide protection.

Under the Lanham Act, a seller applies to register a trademark with the USPTO. The mark can be registered based on actual use in interstate commerce or on intent to use in the future.  

The USPTO takes approximately 5 to 6 months from the application date to make any determination on the merits of the application.  If the application encounters any problem based on the USPTO’s own research, the examiner issues an office Action.  Upon approval by the examiner, the mark is published in the USPTO’s Official Gazette.  A notice indicating that the mark has been approved for publication is sent out.  The purpose of the publication is to allow others an opportunity to file their opposition to the registration.  Opposers have normally 30 days to file their opposition.  If a potential opposer requests additional time, the USPTO generally grants additional 30 days.  After the mark is published and the time for opposition has expired, the mark is finally registered and the USPTO issues the certificate.  The applicant must comply with other post issuance requirements to maintain the registration of the mark on the federal register.  

Please note that even if the mark is published without opposition, someone else can always accuse you either for interfering or infringing their mark.  In such a case, the absence of any initial opposition does not strengthen the legal position of the applicant.  However, if the mark remains on the federal register for five years without challenge and all appropriate documentation with the USPTO is timely filed, the mark can be made “incontestable,” which will greatly strengthen the mark against any subsequent challenges based on infringement.  Paradoxically, incontestable does not mean “not contestable,” it simply means - “harder to contest.”  For trademark applications that are rejected, an appeals process is available.

Under state common law, trademarks are protected as part of the law of unfair competition. Registration is not required, however preferred. For filing of the trademarks within the State of California, please refer to California Secretary of State Website: http://www.ss.ca.gov/business/ts/ts.htm

© 2016 by The Patel Law Firm

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