The Trademark

The Trademark

“A mark is a sign or a symbol which enables its owner to distinguish his goods or services from the same or similar goods or services of another.” World Trademark Law and Practice, Matthew Bender & Co., Inc., Ethan Horwitz, New York, NY (1998)

Trademark rights are derived from common law and the act of using that mark in commerce on a product or for a service. Before filing a federal trademark application you should have Greenberg & Lieberman perform a USPTO trademark search of all federal applications and registrations to determine if anyone has already applied for or registered your mark or one that is confusingly similar to your mark. Additionally, you should have Greenberg & Lieberman do a common law search of the Internet in order to determine if someone already uses your mark or something similar to your mark without a federal registration.

The US Trademark office will award you a federal trademark registration if there are no other previously applied for or registered marks which are the same or similar for the same or similar products/services. Two marks which are exactly the same, but  are in different classes of unrelated products and/or services, do not cause consumer confusion and therefore could each be registered. The exception to that rule is some marks have become so well known that they are deemed famous — and then no other entity may use that mark for any product and/or service, with a few exceptions.

This leaves the question, “Why do a common law search?” As previously stated, a mark acquires trademark / service mark rights through use in commerce. By using a mark on a product or for a service one acquires common law rights in the specific geographical area in which the mark is used. An entity could be using an unregistered mark nationally and thus could file an opposition and prevent you from registering your mark or file a cancellation after the mark registers.

Once Greenberg & Lieberman has completed a screening search and it has been determined that the mark is available and registrable, you should request to file an application to register your mark. You may register federally if you are currently using or intend to use your mark in interstate commerce. An application will put all others on “notice” of your use of the mark or your intent to use the mark. Once your mark registers you will be able to assert your trademark or service mark rights against infringers. Registration is the means that establishes your rights to the mark without presenting evidence of such ownership and it allows you to, among other things, obtain statutory damages against those who infringe on your mark.

Federal registration guarantees your trademark / service mark rights only in the United States. You can protect those rights in foreign countries if you can comply with the requirements established for that countries’ trademark / service mark registration. Greenberg & Lieberman will discuss your options for registration in foreign countries, including but not limited to, filing Community Trademarks and filing via the Madrid Protocol.

Categories: Intellectual Property Blog, Trademark
Tags: common law, federal trademark registration, trademark lawyers, trademark search, trademarks
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