Author’s Note: this article was produced with the able assistance of paralegal Michael Roosevelt, whose background in fine arts, printmaking and lithography (See his website here) sparked his interest in this subject. His practical knowledge of trademark law has have helped clients walk through the process of obtaining valid trademarks quickly and efficiently.
As new businesses begin to produce products and services, and old businesses produce new products or services, they should consider registering the trademarks or service marks (“marks”) associated with them.
Both trademarks and service marks can be registered at the federal level. Only goods – not services – can be registered at the state level in Vermont (Title 9, Ch. 71 of Vermont Statutes Annotated). Federally registered marks are protected throughout the United States – state registered marks are only protected in Vermont.
What is a trademark or service mark?
According to the U.S. Patent and Trademark Office, “A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”
A trademark can take many forms which identify and distinguish specific goods or services. These include letters and words, logos, pictures, slogans, colors, distinctive product shapes; sounds, or a combination of the above.
As stated on the Vermont Secretary of State’s website, “Trademark is different from a business or trade name. The mark identifies the goods; the name identifies the entity which does business, such as selling the goods.”
How do you establish a trademark?
One approach is to establish use in the market and notice your claim to a mark by the use of the “™” symbol and other notices. Another approach is to directly register the mark with Vermont Secretary of State, or the U.S. Patent and Trademark Office to establish “first use.”
For the consumer, trademarks make it easier for them to identify the source of a product. For the businessperson, a trademark protects against the unauthorized use of a confusingly similar mark. While, as indicated above, you do not need register a mark to establish its use in the marketplace, it is generally better practice to register your mark, particularly if you plan to use it extensively and for a long period of time. In addition, registering the mark will ensure that your mark is not infringing on other owner’s marks. As part of the registration process, the USPTO researches to make sure the trademark being registered is not currently in use.
How does the public recognize your trademark or service mark?
A trademark or service mark is identified by the use of the “™” trademark symbol on goods, or the “SM” service mark symbol when applied to services. These symbols place a viewer on notice that you are claiming the possession and use of these marks.
By registering a mark at the federal level, you increase your trademark rights. The “®” registration symbol indicates that a mark has been registered with the United States Patent and Trademark Office (“USPTO”). Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1), provides federal protection against infringement of unregistered marks and trade names and many other forms of unfair competition.
How do you determine whether your mark has been infringed?
A mark is considered to have been infringed upon when someone other than the owner uses the mark in such a way as to cause confusion as to whose goods or services they are.
What are your rights if your mark is infringed upon?
First, you have common law rights to your mark even if you have not registered it, and you can file suit to protect those rights. However, federal registration of a mark brings the owner the right to initiate and infringement suit in federal court and may result in the owner’s recover of treble damages, attorney’s fees, and other awards.
Vermont registration also provides that an mark owner may bring suit to enjoin the use of the mark, and to be awarded damages. Vermont statutes do not provide for attorneys fees or treble damages, but they do provide that the state may file criminal charges against an infringer of the mark.
How to register?
Generally trademark rights can be acquired (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with either the Vermont Secretary of State (for a Vermont only mark) or the U.S. Patent and Trademark Office.
Applications for trademark registration are subject to approval by the USPTO and may be rejected for a number of reasons.
Examples of reasons why a trademark might be rejected are:
- It is likely to cause confusion with an already registered mark (such as McDonald’s” Hot Dogs)
- It simply contains a generic term (such as “Hot Dogs”).
- It primarily describes the geographic origin of the goods or services (such as “St. Johnsbury”).
- It is primarily a surname (such as “Smith’s”), etc
As stated on the USPTO website:
“For advice about trademarks and the USPTO registration process, you should consider hiring a private trademark attorney (not associated with the USPTO) to help you. Although not required, most applicants use private trademark attorneys for legal advice regarding use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration.
“A private attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks. Other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered; therefore, those trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database.
“A private attorney can also assist in the policing and enforcement of your trademark rights. The USPTO only registers trademarks. You as the trademark owner are responsible for any enforcement.”
U.S. Patent and Trademark Office www.uspto.gov.
Intellectual Property Law Association of Chicago www.iplac.org.
American Intellectual Property Law Association www.aipla.org.