Trademark Registration.

In order to obtain trademark protection in the United States, one must file an application with Unites States Patent and Trademark Office (USPTO). Prior to filing the application, however, one must determine what type of registration is appropriate. There generally three types of filings to protect your intellectual property: Patents; Trademarks and Copyrights. Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic, and musical works and Trademarks are brand names and/or designs which are applied to products or used in connection with services. Because this section focuses on Trademark protection, the following briefly discuss some issues concerning proper Trademark registration.

Pursuant to the Trademark Act of 1946, 15 U.S.C. §1051 et seq. different types of marks can be registered with the Office. The two most common types of applications are for "Trademarks" and "Service Marks".

Trademarks.

Generally, the USPTO considers Trademarks as those marks which are used to identify goods- physical commodities, which may be natural or manufactured or produced, and which are sold or otherwise transported or distributed.

The Trademark Act itself defines "trademark" as follows:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof--

1. used by a person, or

2. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 15 U.S.C. §1127.

Service Marks.

According to the USPTO, Service marks are used to identify services, that is, intangible activities, which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise. Provision for registration of service marks is made in §3 of the Trademark Act of 1946. 15 U.S.C. §1053.

The Trademark Act defines "service mark" as follows:

The term "service mark" means any word, name, symbol, or device, or any combination thereof--

1. used by a person, or

2. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor. 15 U.S.C. §1127.

Trade Names.

Under the guidelines of the USPTO, trade names may also be registered. Generally, the name of a business or company is a trade name. The Trademark Act defines "trade name" and "commercial name" as follows:

The terms "trade name" and "commercial name" mean any name used by a person to identify his or her business or vocation. 15 U.S.C. §1127.

Trade names must be distinguished from trademarks and service marks because there is no provision in the Trademark Act for the registration of a trade name which is used solely as a trade name. However, wording which constitutes a trade name may be used in such a manner that it also functions as a trademark or service mark. For this reason it is necessary to exercise care in examination in order to determine registrability of matter which serves the dual function of being a trade name as well as being a trademark or service mark.

Searching for the mark.

Sometimes, the mark for which you seek protection may be already taken by another party. As such, a full search for the mark must be done prior to filing the application. In addition, the law has recently evolved quite rapidly concerning the ongoing debate between registration of a mark and domain name registration. A great deal of litigation in this arena has recently resulted from conflicting cases in different jurisdictions. Finally, a company may not have filed a federal application, but still own the rights to the mark within certain geographic areas through usage of the name for a considerable period of time prior to the date of your application. For a detailed discussion of these issues, you must speak to an attorney that specializes in Intellectual Property matters prior to filing the application.

The value of the Application.

Federal registration of the mark affords a party certain property rights and liberties pertaining to the mark. Specifically, registration grants the following rights:

1. Constructive notice nationwide of the trademark owner's claim. After filing the mark, notice will be recorded on a national basis;

2. Registration of the mark provides evidence of ownership of the trademark should another party have a dispute concerning your use of the mark in commerce;

3. Registration allows one to invoke federal jurisdiction of the Courts. It is also a requirement under the Act, in order to seek damages under the statute. Without registration, you cannot sue another party under the Federal Act;

4. Registration can be used as a basis for obtaining registration in foreign countries.

Litigation.

Registration is required if you intend to file suit under the Federal Act. You cannot seek damages under the statute without valid registration of the mark. In short, if you intend to do business on a regional or national level, it is highly advisable that you seek to register and protect your intellectual property.

In order to properly follow these procedures, you should first speak to a competent attorney who specializes in this field.

(Source: United States Patent and Trademark Office)



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