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A trademark is a word or symbol used to indicate the source of goods. A “service mark” performs the same function for services – for the sake of simplicity I will refer to trademarks and service marks collectively as trademarks. A trademark is how a satisfied consumer remembers you so he or she can purchase your products again.
Why are trademark rights important?
Success attracts copycats. Once you own a trademark, you can prevent your competitors from naming their products in a way that is likely to confuse consumers into believing that their products are associated with you. Trademark rights enable you to stop competitors who deceptively attempt to associate their products with your hard-earned success.
How do I acquire a trademark?
Trademark rights are based on use. As soon as you use a trademark in the sale of your product, you have acquired rights in that trademark and have the right to exclude others from using it (or confusingly similar variations) in the sale of similar products. Registration is not necessary to acquire trademark rights.
There is one exception to the foregoing: if you are not ready to make sales of your product quite yet, but have a bona fide intention to do so in the future, and you want to lock in your right to a particular trademark, you can file an “intent-to-use” application with the United States Patent and Trademark Office (USPTO). This effectively reserves your right to the trademark until you are ready to make sales.
Should I register my trademark?
While trademark rights are not dependent on registration as explained above, trademark registration is generally a good idea in most circumstances. Among the benefits it affords are:
* The exclusive nationwide right to use of the trademark for the goods or services identified in the registration.
* The right to use the familiar ® symbol with your trademark.
Since most people search the USPTO’s database of registered trademarks before selecting a trademark, registering your trademark can help prevent infringement by third parties by placing them on notice that you have superior rights in the trademark.
What is the scope of my trademark rights?
If you have registered your trademark, your trademark rights are nationwide. If you have not registered your trademark, your trademark rights are restricted to the geographic area in which you operate.
As the owner of a trademark you have the right to prevent others from using any trademark that is confusingly similar to yours. A significant part of the “confusingly similar” analysis is the similarity of the goods or services at issue. For example, if you are using the trademark OASIS in connection with a restaurant, and someone across town opens up an OASIS car wash, the newcomer is probably beyond the scope of your trademark rights because restaurant and car wash services are quite different, and OASIS is a commonly used word. If, on the other hand, someone opened an OASIS bakery across town, the newcomer probably is within the scope of your trademark rights, since restaurants and bakeries are very similar services.
What factors should I consider when selecting a trademark for my new product?
There are frequently two competing factors in the trademark selection process. On the one hand, you want to select a trademark that is highly distinctive and will clearly set your product apart from the competition in the minds of consumers. On the other hand, however, you may want to select a trademark that tells consumers something about the qualities or characteristics of your product and is easy to remember-this is especially so in the case of small businesses with limited advertising budgets. The best trademarks are frequently those that achieve both objectives-distinctive enough to set your product apart from the competition, yet descriptive enough to suggest something about the product.
Once you select a trademark, it is of course essential to investigate whether anyone is already using it.
Article originally written by Brett Ekins and posted on www.sglawblog.com. Used with permission. Ekins is an attorney in the Jones Waldo Holbrook & McDonough, PC law firm's St. George, UT office. |
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