| Posted in:IP Law, Trademarks

Trademarks are names or logos used in connection with the sale of products or services to identify the source of the goods or services. Unlike patents, trademarks do not offer legal protection for the product or service. Rather, trademark law protects you from a competitor selling similar goods or services under a confusingly similar trademark in an attempt to trade on your company’s goodwill to divert your customers.

Given that trademark law is directed to the marketing and sale of your product, the issue of trademark protection should be addressed at the start of product development even prior to the sale of the product. The best trademarks, which offer the most protection from a legal standpoint, are those that do not describe the products or services. Marks that are not descriptive are more distinctive and have a better chance of distinguishing you from your competitors. For example, Oreo™ for cookies is a fanciful term that does not describe the product. The choice of a trademark should be made in conjunction with the people who are charged with sales and marketing.

Once a trademark is proposed, a trademark search should be performed to assure that the proposed mark does not conflict with a mark already in use by another. If the proposed trademark is cleared, then an intent-to-use-trademark application can be filed to safeguard your right to use the mark until it can be actually used and registered.

Trademark rights are created by actually using the mark in commerce in connection with the sale or offer to sell the goods or services. Common law rights are created by actual use of the mark, which are then protected by registering the mark with the United States Patent and Trademark Office.

Although common law rights in a trademark can be enforced in court, registration has many advantages. As noted above, trademarks that are used in interstate commerce can be registered with the United States Patent and Trademark Office, and even before a mark is actually used, an intent-to-use-trademark application can be filed. Ownership of a United States Trademark Registration is proof in court of the validity of the registered mark, of the ownership of the mark and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services which are listed in the registration. In addition, after the mark has been registered for a five full years, with the mark having been in continuous use on or in connection with the goods or services, the registration is not only good evidence of your exclusive rights in the mark, but can become conclusive evidence of those rights. Also, unless the mark has been abandoned or become the generic term for the goods, once the appropriate filing has been made, the registration cannot be challenged, except for allegations of fraud. Thus, trademark registration is highly recommended.