TRADEMARKS & SERVICE MARKS

Protection for Your Brand

by Joelle Steele

Your business and brand are afforded protection under Article I, Section 8 of the U.S. Constitution, which gives Congress the power to enact laws that "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Among those laws are those that pertain to copyrights, patents, and trademarks, which protect intellectual properties (intangible creations of the mind made tangible), such as books (copyright), inventions (patent), and business logos (trademark). Trademarks and Service marks are obtained through the United States Patent and Trademark Office, and here's a brief explanation of how they protect your business.

USE OF MARKS

Trademarks and service marks are collectively referred to simply as "marks." Trademarks are designs, phrases, symbols, or words that identify and distinguish one product from another. They are usually a brand name or logo, such as the Nike "swoosh," the Wells Fargo stagecoach, the Coca-Cola label, McDonald's golden arches, the Microsoft Windows logo, or the GE (General Electric) logo. The use of trademarks is supposed to ensure consumers that they are buying a particular product and not a similar product made by someone else. Service marks are the same as trademarks except that they identify and distinguish a service rather than a product.

REGISTRATION

A mark does not need to be registered, and some trademarks are common law, but there are benefits to having a mark registered. Registration provides a public notice of ownership of the mark, provides the exclusive right to use the mark on goods or services, and constitutes a presumption of legal ownership of the mark in the United States. Unlike copyrights and patents, marks do not have an expiration term. They last as long as they continue to be distinguishable after which they may become generic, which means the mark's owner must take steps to keep the trademark alive and uniquely theirs. Anyone can use the trademark, as long as they do not use it commercially in such a way that it could become confusing to the consumer.

APPLICATION

The application process is described in detail at the Patent and Trademark Office's Web site. Anyone wishing to register a mark should do a search to make sure the mark is not already registered by another entity. A mark must be registered in one of three different ways: as characters only, as a design only, or as a sound. The goods or services to which the mark refers must be described in specific details. The application also requires that filing is done on a specifically defined basis acceptable to the Patent and Trademark Office, and that a non-refundable processing fee be filed.

INFRINGEMENT

A mark does not convey ownership of a product or service, only the right to use the mark in federally regulated commerce to identify the product or service as being that of a particular company and not one that is a counterfeit. Legal action can be pursued in federal court if a mark is infringed in any way.
One of the most common ways in which marks are infringed is through importation of foreign goods bearing the U.S. trademarks. The U.S. Customs and Border Protection Bureau of the Department of Homeland Security keeps records of trademarks. Once a mark is registered with the Patent and Trademark Office, the trademark holder can register it with the Customs and Border Protection Bureau to assist them in preventing these types of infringement.

INTERNATIONAL PROTECTION

The Madrid Agreement Concerning the International Registration of Marks is one of two treaties that enable trademark holders to ensure protection of their marks in participating other countries by filing with a single office and currency. The "Madrid System" or "Madrid Protocol" simplifies the management of the mark by recording any changes of ownership in the mark with the World Intellectual Property Organization's International Bureau, the Madrid System's governing entity.