You may have come across a time where you have had somebody tell you, “You should trademark that!” Even though many people like to provide unsolicited advice on whether or not you should trademark something, often in my practice, it is likely the case that people do not really understand what a trademark is, how it differs from other intellectual property, what can be trademarked and the advantages and disadvantages of obtaining and registering a trademark.
What is a Trademark?
Generally a trademark is a word, logo, picture, symbol, or in certain situations, a sound or a color, which identifies the source of a product or service. If a mark identifies a service, it is called a service mark, if it identifies a product, it is called a trademark. Basically if a mark is unique, not descriptive and serves to identify a product or service it has the potential to be protected as a trademark or service mark.
A trademark, patent, trade secret or copyright each protects different types of property and each differs in how you gain exclusive rights in them. A patent generally protects a “unique and useful invention”, which is obtained by making certain filings with the United States Patent Office. A copyright protects “an original work of authorship fixed in a tangible medium” (such as a book or a song recorded on a record), which is obtained when fixed into a tangible medium, such as written down, drawn, or recorded. It can also be registered with the Library of Congress. A trade secret basically protects information not otherwise protected within the other categories of intellectual property, such as a recipe or list of ingredients, which is protected by keeping it secret (i.e. confidentiality agreements, locked file cabinets, confidential stamps, etc.).
How do I Obtain a Trademark?
There is a simple answer to the question of how you obtain a trademark…you use it! Minnesota and Federal statute provide that you obtain rights in a unique mark identifying your good or service simply by using it in commerce. This means that if you wish to obtain exclusive rights in a logo, name, or other identifying mark, you should immediately start using it in connection with your product or service. You should use the mark on your product packaging, in your advertising and brochures, on your vehicles, shirts, invoices, websites, etc…basically wherever you have an opportunity to cause the general public to identify your mark with your company and service. Through use of your mark you gain exclusive rights in the mark only within the geographic locations where you legitimately do business (i.e. advertise and sell your goods) and your rights are subject to anyone in the same area that used the same or similar mark with similar products or services prior to you. Note also that prior to using a mark, you should be sure to use something that is unique and is not substantially similar to another person’s mark, which could cause you headaches and liability later. In today’s world, running a quick internet search and searching the U.S. Patent and Trademark database can go a long way to prevent infringement issues.
What is Registration For?
Even though you obtain rights in a trademark by using it, there are certain additional benefits you obtain by registering a mark with the U.S. Patent and Trademark Office. In an infringement action against someone else that uses your mark in relation to a similar product or service, it becomes a lot easier for you to prove when you acquired rights in the mark and whether or not the mark is protected under applicable law if it is registered. In addition, you also have the ability to obtain additional damages from anyone using a similar mark. Finally, you automatically have the exclusive right to utilize the mark in relation to your goods or services in the entire country, not just the areas where you do business.
How About that ™ and ® Symbol?
The ™ and ® symbols are utilized by persons and businesses to provide notice to the public of your rights in a certain mark in relation to your goods or services. The ™ symbol is generally utilized when a person has not obtained a registration in a mark yet, but wants the general public to be put on notice that it deems its mark to be protected and is using it as such. You should utilize this symbol if you want to gain rights in a mark prior to registration. The ® symbol provides notice to the public that you have registered the mark with the United States Patent and Trademark Office and have the exclusive right to utilize it in the entire country in relation to your product or service. Once you register your mark, you should regularly utilize the ® with it while utilizing it in commerce.
With the above basic knowledge you can better recognize an often mysterious and unknown asset that you may have or have the potential to acquire and take the necessary steps to protect it. Often a little planning with respect to use of a trademark or service mark can go a long way in the success of your business.
Additional Assistance and Questions
The information provided within this article is a broad overview and general discussion of only some of the major issues to consider when utilizing trademarks and service marks and is not intended to be legal advice. You should seek the advice of competent and qualified counsel to review your specific situation regarding your matter.
Please contact Brodie Miller at Rinke Noonan at (320) 251-6700 if you have any further questions or concerns with intellectual property and use of trademarks or service marks.
© 2012 Rinke Noonan