Markery Law, LLC

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Q & A

What is a trademark?

A trademark is the brand name or logo customers use to identify your company and its goods or services and distinguish your goods or services from others. A trademark or service mark can be a word, symbol, phrase, and, in some cases, scents, sounds, colors and shapes used to identify a company's goods or services.

What is the difference between patent, trademark and copyright?

A patent is an exclusive right granted for new and novel inventions and discoveries. A copyright protects the expression of ideas in a tangible form like literary, musical or artistic works. A trademark is the brand name or logo under which companies or individuals sell and market products and services to distinguish them from others.

Trademark vs. Service Mark

The term “trademark” can be used to identify any type of mark including service marks, logos, trade dress, trade names, and certification marks. In its more strict definition, the term "trademark" is used in connection with the marketing and sale of products and goods, whereas, the term “service mark” is used in connection with the offering and rendering of services.

Do I need a trademark search?

Generally, the first person or entity to use a trademark has superior rights over a junior user of a similar mark on similar goods or services, and consequently, the right to sue the junior user for infringement. Conducting full availability searches provides us with a better understanding of whether or not your mark is available or if it is likely to infringe an earlier mark. In some cases, not conducting a search can be held against you in a later filed trademark infringement action filed against you in a federal court.

How do I protect a trademark?

In the US, trademark rights can be based on simple use of a mark in commerce, but such rights are limited. Federal registration provides additional benefits. In addition, in many foreign countries, rights are only based on the first to register a trademark, regardless of use. For these reasons, it is imperative for your business to file for protection in the U.S. and in foreign countries.

Why should I register a trademark?

Federal registration provides additional benefits to trademark owners not available with simple use of a mark. For example, federal registration provides a legal presumption of the validity of the trademark, presumptive ownership of the mark, and presumptive nationwide rights to the mark. Federal registration also provides the public with notice of your rights that can serve as a warning to potential infringers. Registrations can be recorded with the U.S. Customs and Border Patrol to prevent the importation of infringing goods. Also, the owner of a federal registration is granted the right to use the ® symbol in connection with the registered mark.

What is "use" of a trademark?

The trademark must be used in connection with the offering and selling of goods or offering and rendering of services in the ordinary course of trade. Trademark use means that the trademark should appear on or in connection with the goods or services offered under the mark. For service marks, this means that the mark should appear in promotional material, like brochures or websites, in close proximity to a description of the services offered and rendered to customers in commerce. For trademarks used on goods, use means that the mark should appear on the goods themselves or on their packaging or labeling and should be sold or distributed in commerce.

Why do I need a trademark lawyer?

A trademark lawyer can help before, during and after the registration process. A trademark lawyer can help you avoid expensive legal battles by searching and clearing a mark before adopting and using a mark. You can conduct your own search for third party marks, but a trademark lawyer can help you interpret the results, tell you what you should be looking for and if there what might be a problem? Also, since trademark rights in the U.S. can be based on use without registration, a trademark lawyer can conduct a more thorough search than you might be able to conduct on your own, and can help interpret the results. In addition, a trademark lawyer can help protect and enforce your mark against third parties. If you are still not convinced, studies have shown that retaining a seasoned trademark lawyer makes a significant difference in navigating the application process and obtaining a trademark registration for companies. See Deborah R. Gerhardt and Jon P. McClanahan, Do Trademark Lawyers Matter?, 16 Stan. Tech. L. Rev. 583 (2013).

When can I use an (R)?

In the U.S., you should only use the ® when you have been granted a Certificate of Registration from the U.S. Patent and Trademark Office and only in connection with those goods or services covered by the registration. There are no restrictions on when a "TM" can be used.

What is trademark infringement?

Trademark infringement occurs when a junior party uses a trademark that is identical or similar to a prior trademark in connection with identical or related goods or services such that there would be a likelihood of confusion among consumers that the goods or services emanate from one source. The owner of the prior mark may file a complaint against the junior user in federal court for injunctive relief, monetary damages and/or attorneys' fees.

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