In today's competitive markeplace, it is becoming increasingly important for merchants and manufacturers to differentiate their goods and services from those of their competitors. With the advent and proliferation of the Internet, there are more products and services being offered than ever before, making it more difficult for sellers to find and maintain a niche. Because of this competitive environment, federal trademark registration can be as important as selecting your business' name or slogan.
A trademark is any word, phrase, symbol or design (or any combination thereof) used by a seller or manufacturer to distinguish his or her goods. A service mark is similar to a trademark, except that it is used to distinguish services. Examples of valid trademarks include: the word "Microsoft," the phrase "Here's Johnny," and the Nike "swoosh." Federal trademark registration gives you a competitive edge by ensuring that your mark cannot be adopted and used by other sellers without your permission. In addition, federal registration is desirable because it makes it more difficult for other merchants and manufacturers to succeed in lawsuits against you for infringement. While common law trademark protection comes into existence as soon as you actually use the mark to identify your goods or services, such rights are determined by the date of first use of the mark in commerce and are limited to the territories or markets in which the mark is used. For example, if you first use a mark in commerce in the State of Maryland in 1990, your mark will have priority over identical marks which are first used after 1990, but only in the State of Maryland. The priorities set by common law may seem clear at first glance, but consider what happens as you and your competitors begin to expand into new territories. It can become increasingly difficult to prove whose rights are superior where marks are being used in the same territories by competitors. Also, you may find it difficult to prove that your date of first use was prior to that of your competitor. Therefore, it is important that sellers consider the benefits of obtaining federal trademark registration, which include the following:
- Identifies a seller's goods and services and distinguishes them from other goods and services;
- Signifies that all goods or services with the same mark are from or controlled by the same source;
- Signifies that all goods and services bearing the mark are of the same level of quality;
- Gives constructive notice to others of the existence of the mark;
- Is prima facie evidence of the validity of the mark and of the registrant's right to use the mark in commerce in connection with the goods or services specified in the certificate of registration; and
- Allows for the use of the (TM) symbol.
If you currently own a business or if you are considering starting one, you should carefully consider the name of your business, as well as any names, phrases, designs and symbols for the products or services. If you have not yet started selling goods or providing services, you may file an intent-to-use application, which acts as a reservation process for the proposed mark. If the mark is already being used, you should file a use application which shows the mark as it is currently being used in commerce. Before filing either type of application, however, you should investigate whether the name or de-sign is currently being used by another merchant or manufacturer, and if so, in what States and territories, and determine the likelihood of obtaining registration. We can assist you in performing a trademark search to determine whether there is a conflicting existing mark, and if not, filing the appropriate documents to register your mark.
The application process takes at least 18 months to complete, so you should apply for registration as soon as you have finalized the mark. If you are already using the mark, federal trademark registration is still an important consideration - federal registration may deter others from trying to adopt and use a mark which is similar to yours. Losing the right to use the name under which your customers associate your business or products is a costly lesson to learn and is one which usually can be avoided.
For more information on trademark registration, contact Hilary J. O'Connor at 410-/752-9746.