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, product configurations, sounds, colors, or even distinct scents can be trademarks. Words that merely describe goods and services cannot be protected as trademarks.
Q: What is a service mark?
A: A service mark is a mark that is used in conjunction with services. The rules that apply to trademarks also generally apply to service marks.
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 for similar goods and services.
Q: Does it matter when a person applies for registration?
A: It can make a big difference. If a business does not register its trademark, another business in the same field may be able to use it. The other business may also obtain a federal registration, which may limit the first user'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 Xerox® or Google® are very distinctive marks. 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. 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 other countries?
A: Yes. Almost every country provides some form of trademark rights. To have protection it is generally necessary to register the mark with the authorities in each country or with a regional trademark authority. 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.
This "Law You Can Use" is a consumer legal information column was provided by the Ohio State Bar Association. It 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.