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What You Don't Know about Trademarks Could Hurt Your Business


Almost every business uses trademarks. However, most business people rarely think about trademarks, even though a trademark represents one of a business's most valuable assets: its reputation. Trademark rights may be lost if they are not properly obtained and protected. The trademark rights of the competition also must be understood, or a business may have to pay a great deal of money for infringing on those rights.

Q: What is a trademark?
A: Anything customers associate with a business's products or services can be a "trademark." Trademarks are usually words, slogans, or designs, but in some situations, sounds, colors, or even distinct scents can be trademarks. Words that merely describe goods and services cannot, however, be protected as trademarks.

Q: What is a service mark?
A: A service mark is a mark that is used in conjunction with services.

Q: How do you protect a trademark?
A: A business has some legal rights simply because it has used a mark. Better protection is available through registration of the mark with the U.S. Patent and Trademark Office. A person can apply for registration before his or her business begins using the mark.

Q: What is the effect of federal registration of a trademark?
A: Except in certain situations, once a trademark is registered, the owner of the registration is the only one in the United States who may use the trademark in conjunction with goods and services for which the mark has been registered. A trademark also serves as protection against competitors' use of confusingly similar marks.

Q: Does it matter when a person applies for registration?
A: It can make a big difference. If a company does not register a trademark, another firm in the same business may be able to use it. The other firm may also obtain a federal registration, which may limit the first company's ability to use the mark. The legal rules in such situations are tricky. One thing is certain: the earlier a business entity registers its mark with the U.S. Patent and Trademark Office, the stronger the entity's legal position will be in the event a trademark problem arises.

Q: Can a trademark be registered with the State of Ohio instead of the U.S. Trademark Office?
A: Most states, including Ohio, will register a trademark. A state registration, however, usually only documents that someone is using a mark. It does not provide the legal rights available through federal registration.

Q: What is the best way to select a new trademark?
A: Picking a new trademark involves finding a mark that customers will like and remember. Generally, the best trademarks are arbitrary or fanciful marks. Made up words such as Kodak® or Teflon® are very distinctive. Trademarks that are somewhat suggestive of the business's products or services are often used, but may not be as distinctive. Of course, words that are generic names or merely descriptive of the goods or services cannot be protected as trademarks and should not be considered. Once a possible new trademark is selected, it is best to have a trademark attorney make sure that it can be used without infringing on someone else's trademark. Someone who infringes may not only be prevented from using the mark, but may also have to pay damages and attorney fees.

Q: Is it possible to protect a trademark in foreign countries?
A: Yes. Almost every country recognizes some type of trademark rights. It is generally necessary to register the mark with the authorities in each country or regional trademark jurisdiction to have protection. The federal registration of a mark in the United States provides no rights in other countries. However, an international registration can be filed to obtain the extension of a United States application or registration to a number of other countries. Businesses should consider protecting their trademarks in all countries where they have distributors or a significant number of customers.

11/14/2012

Law You Can Use is a weekly consumer legal information column provided by the Ohio State Bar Association. This article was prepared by Ralph E. Jocke, a patent and trademark attorney with a worldwide practice, and a principal with Walker & Jocke, L.P.A., located in Medina, Ohio.

Articles appearing in this column are intended to provide broad, general information about the law. Before applying this information to a specific legal problem, readers are urged to seek advice from an attorney.

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