Do I Need A Trademark?Does your company, invention or products have any names, words, symbols, numbers, slogans, or designs that make them different from everyone else's? How about special sounds, animations, packaging, colors, odors or shapes?
If you answered yes to any of those, you should seriously consider protection under trademark law.
Obviously, many companies do. Take for example the exact pink color of Owens-Corning® insulation, or the rumbling sound of a Harley-Davidson® motorcycle, or the hour-glass shape of the old Coke® bottle, or the letters IBM®. Even the tick-ticking of 60 Minutes® TV show's stopwatch. All are trademarked because the owners felt some special color, sound, letter combination or product appearance was unique and needed protection from copycats.
What's the meaning of the 'TM', 'SM' and the circled 'R' that you see next to product names and logos?
- TM is for 'Trademark' - which identifies goods which may be natural, manufactured, or produced. It is typically printed with your labeling information in superscript - TM - and all caps. It is a voluntary, non-regulated way for you to tell the nation that this emblem, name or design belongs to you. You do not need permission or pay a fee to use the trademark symbol. Using it alerts others that what you have is unique, and it can help you establish in court later, if you need to, when you identified your goods as unique.
- SM is for 'Service Mark' - Similar to the trademark, the SM symbol is printed with labeling, superscripted - SM - in all caps. It identifies not goods sold or distributed, but services provided such as contracting, or retail sales, or restaurants. A service then might include that of a carpenter, cleaner, or even a rock and roll band.
- ® is for 'Registered Trade Mark' - meaning your trademark or service mark has been officially registered with the U.S. Patent and Trademark Office. To obtain the registration, you have to file a formal application and pay a fee. In return, a registered trademark gives you federal protection, so you can stop another person or company from using your name, slogan or logo. It's very important to note that you may use the federal registration symbol "®" only after the USPTO actually registers a mark, not while your application is pending.
Unfortunately, trademark naming is such an art that going into great detail is beyond the scope of this article. The basic thing to know is naming an invention or product most typically involves developing at least two names - the trademark or brand name, and its generic name.
For example, Pepsi® is a brand name; cola or soft drink are its generic names. Lexus® and Toyota® are the brand names, and the word 'car' would be the generic name. IBM® and Gateway® are brand names; computer or software are generic names. So you would write 'Lexus® cars' or 'Gateway® computers.' Note that the brand names are very arbitrary, making for strong trademarks. Other examples are Scotch® Tape, Sanka® Coffee, Jello® Pudding Pops, Minute Maid® Orange Juice -- excellent because the trademarks are totally arbitrary.
There are good reasons for knowing all this. A trademark that's simply a noun is problematic because other people can begin to use the mark generically and you lose the right to protect it. Some famous words started out as trademarks became nouns that aren't protected under trademark law. Examples are cellophane, shredded wheat, aspirin, escalator, and a host of others.
About Trademark Protection
Essentially, the trademark gives you the right to exclude others from using a name, symbol or unique attribute that identifies your product or service. However, trademarks are neither copyrights nor patents. Trademarks cannot be used to stop others from copying goods or services; they cover the name, the packaging or the logo, etc. Nor can trademarks prevent others from using common descriptive words such as 'toy train,' 'rubber ball' or 'crankcase oil.'
In my view, the trademark is a great legal bargain. Unlike patents which have a 20-year life from the date your application is filed, trademarks can be renewed forever as long as they're continually being used in business. You must inform the U.S. Patent and Trademark Office of your continued use every 10 years. As stated earlier, however, there are no requirements to get a formal trademark registration with the federal government - meaning you can use the trademark "TM" symbol indefinitely.
Further, you can trademark goods that may have been around awhile. For example, a recent client of mine was seeking a trademark on a spoon-shaped fishing lure. He had inherited the business from his father, who had inherited it from his father, who had purchased it from another company in the 1920s. Luckily, it turned out no one had ever registered a trademark on the lure. There we were nearly 80 years later filing a trademark application, and the USPTO granted it. Still, my best lawyer-ly advice is for anyone to use that "TM" trademark symbol right away.
Federal vs. State protection - Let's say you obtain protection through federal trademark registration. Although you might not be selling the product in all 50 states, federal registration means you can stop someone else from doing business with that trademark in any other state.
On the other hand, it's possible you have a strictly local business and you want to protect your mark only in your home state. Each state has an office for protecting trademarks. While it's much cheaper to get trademark protection in a single state, you won't necessarily be able to enforce your rights across your state border.
Protecting graphics and logos - Sometimes we file a trademark application on just letters or words, and then file another application on the design. In the case of having a logo and wording along with it, that can mean filing up to three trademark applications for the word, the logo and the combination. For example NutraSweet® sugar-free sweetener is often pictured with a swirl design. In their case both the word and design are protected, so the product's makers can stop you from using the design alone, the word alone, the combination, or anything confusingly similar.
Beginning the Process
Very early in your process of choosing a trademark you'll need to know whether an existing mark is already registered or filed with the USPTO. Obviously if someone else has the same registered trademark on your type of goods or services, you can't use it. You'll need to start over.
A smart way to start is have a trademark search performed professionally. That way you can avoid trouble later, such as having your trademark application disapproved when the USPTO does its search.
While many law firms offer a formal search service, you can always perform a limited search yourself by visiting the U.S. Patent and Trademark Office in person, or its website at www.uspto.gov Also, word marks may be searched at over 70 Patent and Trademark Depository Libraries (PTDLs) located throughout the country. For a listing, go to www.uspto.gov/web/offices/ac/ido/ptdl/ptdlib_1.html
Once you're satisfied your trademark is unique and start to use your mark in interstate commerce (that is, in at least one state other than your own), you may then wish to file a formal registration application with the USPTO. While not technically difficult, it takes care to properly fill out and submit the application. For details, see the USPTO website at www.uspto.gov/main/trademarks.htm. By all means, consider getting help from a reputable attorney skilled in Intellectual Property.
To summarize, you don't need permission from anyone to use a trademark or service mark. Likewise, even if you use these symbols you never have to file a trademark application or pay the application fee. The symbols tell the world it's your mark, so they can't use anything confusingly similar. And the symbols give notice you have the right to stop others from using the name you've chosen. So if you go to court, a properly displayed trademark shows you've given that notice.
A trademark is like insurance protection. If your invention's name, logo or packaging are valuable enough to prevent copying, then it's to your very best advantage to protect them.