A trademark is something that acts as a source identifier for the goods and/or services bearing them (or used commercially in association with them), thereby distinguishing those goods or services from another party’s goods or services. A trademark may take the form of a word, a phrase, a symbol, a logo, or even a design or product configuration – so long as it is not functional. A trademark may also take the form of a non-functional color, sound, or scent.
While a trademark may be used without ever being registered (i.e., as a “common law” trademark), it is highly advisable to register it because – for example – doing so strengthens the geographical reach of the exclusivity rights conferred by the registration, expanding it to the entire country (if registered federally with the United States Patent & Trademark Office – “USPTO”). Specifically, while the user (in commerce) of a common law trademark has the right to exclude others from using his mark for similar goods or services, it is so but only within the same geographic area where the common law trademark owner uses his mark. Further, registration of a trademark provides its owner additional enforcement tools not otherwise available for unregistered marks, in addition to other benefits. For example, registration creates a record with the USPTO, providing the public notice as to the existence and scope of coverage of the mark. That public notice will generally prevent subsequent parties from adopting and using confusingly similar marks.
Unlike the case with patents, there is no fixed term for a trademark registration, since it can be renewed indefinitely so long as it remains in use in commerce. It should be noted that a trademark registration does not confer upon its owner the right to broadly exclude use of the word, phrase or symbol but rather only so in connection with the specific classes of goods and/or services for which the trademark is registered. For example, while the word mark APPLE may be exclusive to the corporation known as Apple Inc. for computers and similar devices, that company would not generally be able to exclude others from using that term for unrelated products e.g., apples (the fruit) or an article of clothing. But there are some exceptions to that rule – connected to the theory of dilution – which go beyond the scope of this article.
A trademark application in the United States is filed with the USPTO, whose examiners assess the non-functionality and distinctiveness of the mark. Those examiners also assess whether the applied-for mark is likely to cause confusion with existing registrations as well as with earlier-filed pending trademark applications. As part of the application process, the trademark application is also published and made available to the public, and officially open for opposition by anyone that believes he/she may be affected if the registration is allowed to proceed.
The owner of a trademark may accuse another party of infringing his mark. The test for trademark infringement, in that regard, is based on whether the accused user of a trademark is likely to cause confusion among the public as to the source of his goods or services. Aside from infringement, however, a party using someone else’s trademark may be liable if that conduct is likely to cause dilution (i.e., by blurring or tarnishment) of the registered mark.
Whether a person is seeking to protect a trademark through registration or to assess whether a proposed trademark is likely to infringe or otherwise make him liable over another person’s registered or unregistered trademark, it is important to retain the services of competent trademark counsel. And this is particularly critical when launching a new product or service that bears/uses a new trademark, even if that trademark is created independently. In the case of a trademark being considered for use with a product or service, trademark counsel will be able to provide advice on (1) the likelihood that the USPTO (or even state trademark agencies) will allow the registration to proceed, and on (2) the likelihood the proposed mark may infringe another party’s registered (or unregistered) mark.
