Answers to Your Questions about Trademarks

Here are some answers to questions about trademark law.

Q. What is the difference between a trademark and a service mark?

A. A trademark is a word, phrase, symbol or design (or a combination), that identifies and distinguishes the source of the products of one party from those of others.

Trademark Quiz Q. Can a sound be registered as a trademark? A. Sounds can be registered as trademarks in the United States. For example, the familiar three-tone chime of the National Broadcasting Corporation (NBC) has been registered. Other well-known sound trademarks include the lion’s roar of MGM, the Harlem Globetrotter’s theme song, “Sweet Georgia Brown,” and the spoken words AT&T accompanied by music.     However, not all companies are successful in securing sounds. In 1994, Harley-Davidson Inc. tried to file as a registered trademark the exhaust sound of its motorcycle engine. Several competitors opposed the move. Years later, Harley withdrew the application.

A service mark is a word, phrase, symbol or design (or a combination of these), that identifies and distinguishes a service rather than a product.

The term “trademark” is often refers to both trademarks and service marks.

Q. I have created a great logo that I want to use with one of my company’s products. What should I do next?

A. First, a search should be performed to make sure your logo doesn’t infringe on the trademark of anyone else. If there is no obvious infringement, you can go ahead with an application to register the trademark with the United States Patent and Trademark Office (USPTO). Even if nothing comes up in a search, your application may still not be approved, or another party could object.

Q. Why would the USPTO reject an application?

A. There could be several reasons. For example, an application could be refused because it is likely to cause confusion with a mark in a registration or prior application. It could also be turned down because the trademark includes a geographic term or a descriptive work for the goods or services. For example, The TV Store or the Chicago Cleaning Company are not likely to be approved.

Q. Is it possible for two companies to trademark the same name or logo?

A. Yes. The issue comes down to whether consumers would be confused by the same name. A trademark generally does not infringe on another trademark if the two companies’ products or services are not competing with each other and the companies are not in the same area.

For example, if there is a dry cleaner in California with the same name as a dry cleaner in Maine, there is not likely to be consumer confusion. However, a clothing store with the same name in the same city would create confusion.

When it comes to trademark protection, the Internet has changed things. Decades ago, two retail companies with the same name could operate in two different states and probably never even know of each other’s existence. Today, the two companies may both have Web sites and be going after the same customers nationwide.

Q. Do I have to file a federal trademark registration in order to have trademark rights?

A. No. You can establish rights in a trademark based on use of the mark in commerce. In other words, you don’t need a registration. However, owning a federal trademark registration provides several important benefits.

Q. What are the benefits of federal trademark registration?

A. Federal trademark registration provides several advantages, including:

• Public notice of your claim of trademark ownership.
• A legal presumption of your trademark ownership and your exclusive right to use the mark nationwide on, or in connection with, the goods and services listed in the registration.
• The ability to bring an action concerning the mark in federal court.
• The use of the U.S. registration as a basis to obtain registration in foreign countries.
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods.
• The right to use the federal registration symbol ®.
• Listing in the United States Patent and Trademark Office’s online databases.

Q. Can a minor file a trademark application?

A. It depends on your state’s laws. If the minor can validly enter into binding legal obligations, and can sue or be sued, in the state where he or she lives, the application can be filed in the name of the minor. Otherwise, the application must be filed in the name of a parent or legal guardian. An example of how the applicant should be identified in such cases is: “John Smith, United States citizen, (parent/legal guardian) of Mary Smith.”