The Trademark LawTrove provides some Frequently Asked Questions and answers about the United States laws of trademarks and their registration. These FAQs are not intended as legal advice: The trademark laws change frequently as new cases are decided and statues are enacted. Consult your own attorney regarding any question you may have that is specific to your situation:
Yes, it matters a lot, because your mark could attain high value if chosen and used properly. Though it may cost nothing to adopt initially, your mark will begin acquiring value continuously from when you file to register the mark and begin using it in your business. The longer you stay in business successfully, the more value your mark will acquire.
The value of the COCA-COLA® trademark for soft drinks has been estimated at $30 billion, and that amount may be low. Similarly, the value of the HARLEY DAVIDSON® mark may outweigh that of all other assets of the motorcycle manufacturing company that owns the mark.
Your mark may be the only means for customers to identify your goods or services. Cheap, instantaneous global communications now enable companies to produce a good or deliver a service anywhere in the developed world. Ultimately, the only means of identifying the goods or services that your company sells to the buying public worldwide will be through its trademarks.
Loss or dilution of your high value mark could prove devastating to your business. If you choose a mark that proves eventually either to be unusable because it conflicts with a prior user of a confusingly similar mark, or is unprotectible because it is overly descriptive or generic, at the least you may lose valuable time in having to re-market and sell your good or service under a new mark, and at worst, you may have expend attorneys' fees defending an indefensible mark, and possibly pay damages to a conflicting, prior user.
Yes, it is. Trademarks are often thought of as brand names, and as such, identify a product or service as coming from a particular company. When, in marketing parlance, you create brand name value, you are simply building up marketplace recognition of your trademark.
Specifically, a trademark can be a word, phrase or design that, through use, becomes exclusively associated with a certain product or family of products, e.g.
- EXXON for gasoline and motor oil,
- WE TRY HARDER for Avis car rentals;
- The design of a four-paned window for Microsoft Corporation's operating system software.
A service mark is identical to a trademark except that the mark identifies services instead of a product. Many marks that appear on the Internet are for services because much of what is sold over the Internet consists of services. For example,
- YAHOO! for search engine services,
- EBAY for auction services;
- AMAZON for the sales of books and other items, and associated services.
The word "mark" can refer either to a trademark or to a service mark, though "trademark" often refers to either type. "Trademark" in these FAQs refers to service marks also. The fact that one must specify in one's registration application whether the mark is a trademark or service mark is a vestige from an earlier era when service marks were not registrable under U.S. trademark law, and carries very little significance at this time.
A trade name is a company name that is used neither as a trademark nor a service mark.
A trade name per se is not registrable as a mark even though many company names are also used as marks, and are therefore registrable as such. If your product company does not use its name as a trademarks, it should not attempt to register it. for example, Proctor & Gamble, markets a wide variety of products, but has never used or registered its company trade name as a trademark.
Companies that are primarily in the business of delivering services nearly always use their company name as their chief service mark, e.g., Accenture for accounting services, or Sapient® for Computer and Web oriented consulting services. Therefore, if your company is in the services business, registering its trade name as a service mark ought to be one of the first things you consider doing when establishing its business.
- You should register your company name if it sells a single or primary product, and you wish to use the product name for your company (or vice versa) in order to avoid confusion and increase the "branding" of the name. E.g., TIMESLIPS® Corporation, which sells the popular time and billing software of the same name, or HOOVER® Corporation for vacuum cleaners.
- You should register your company name if it sells a whole line of products rather than a single one, and the name is becoming a trademark by association with its products. E.g., FORD® for automobiles, or ADOBE® for software.
Companies with lengthy trade names will sometimes use the acronym of their trade name as their primary service mark: e.g. Columbia Broadcasting System, National Broadcasting System, and American Broadcasting System, use the acronyms CBS, NBC and ABC, respectively, as marks for the service of providing news and entertainment services over electronic media.
Any acronym may be registered as a mark if it is used to sell goods or services. The registrability of an acronym is not limited by the meanings of the words that it abbreviates. Thus, an acronym for a phrase that is descriptive or that is a merely trade name can be registered as a mark when the acronym itself is a proper trademark even though the phrase itself would not be registrable. Sometimes, using an acronym is the only way to get a mark registered.
The duration of legal protection for your mark can be perpetual, but you must use it continuously. If you are able to show continuous use, your common law right to use the mark will last indefinitely.
Yes, you may protect the total image of a product itself or its packaging, including elements such as size, shape, color or color combination, texture or graphics as "trade dress" as long as those elements are nonfunctional, and are inherently distinctive or have acquired secondary meaning through use.