THEORY

The consumer and vendor relationship must be protected.

Establishing Trademark Rights

Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.

There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Trademarks are used to identify and distinguish one vendor’s goods or services from those of another vendor. The laws regulating TM’s are covered in 15 USC 1114. Unlike Patents or Copyrights, there is no constitutional basis for Trademark law. Trademarks protect the consumer by ensuring that there is no marketplace confusion or fraud regarding the source of a good or a service. Trademarks and Service Marks are generally used to indicate quality. Trademarks also protect the vendor/owner by ensuring that no one can steal his goodwill (the consumer’s perception of his quality, reputation and available goods or services). Thus, the owner can recoup his marketing, research and development costs in bringing a quality good or service to the market. Trademarks prevent unfair competition by not allowing a vender to capitalize on the hard work of another vendor. A trademark is what you rely upon to identify the “genuine” article.

Trademarks may be registered both federally and in most states. State registration offers little protection outside that state, which is an extreme drawback today since most commerce utilizes the internet to market and sell, and thereby is not hindered by state boundaries.

Trademarks must be used in interstate commerce. In granting a Trademark the USPTO must balance what can be protected from what must remain in public domain. This is because trademarks are not original in nature, but rather are an adoption of something already in existence (such as a linking of known phrases or names). The threshold for obtaining a trademark is lower than for a patent but higher than for a copyright.

The main Federal Act that covers TM’s is called the Lanham Act. (15 USCA § 1051 - 1127) There are 4 kinds of TM’s that are protected by the Lanham Act. Each must be “used in commerce” to be allowed to be registered. Token use of a trademark is no longer acceptable although there is an “intent to use” provision. .

1. A trademark is defined as "any word, name, symbol or device or any
   combination thereof, adopted and used by a manufacturer or merchant to
   identify its goods and distinguish them from those manufactured or sold
   by others." 15 U.S.C. § 1121
2. A service mark is a type of trademark, which identifies the source of
   services. (The term trademark will generally be used hereafter to mean
   either a trademark or a service mark).
3. A trademark identifies the source or origin of goods or services, even
   though that source itself may not be known to the potential purchaser.
4. A trademark symbolizes goodwill by identifying a particular, if
   unknown, source to potential purchasers. By so doing, the trademark can
   also serve as a warranty of quality.