How Do I Protect My Idea? Part II: Trademarks and Service Marks

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: trademarks and service marks.

A trademark (for products) or a service mark (for services) is something that identifies the source of a product or service. A mark (meaning either a trademark or service mark) may be a word, design, color, scent, or sound. However, it cannot be useful (referred to in trademark lingo as “functional”) in referring to the product or service whose source it is identifying. This is to prevent someone from removing a term or other identifier essential to selling a good or service from the marketplace—for example, you could not register a cylindrical shape as a trademark (trade dress) for a wheel. It would prevent anyone else from competing with you.

Rights in a mark can be obtained merely by using the mark in association with the sale of goods and services—this gives you rights in the mark at common law. You need not do more than this; however, there are many limitations to common law use, not the least of which is that it can be difficult to prove that you have the rights you claim. To show that you have common-law ownership of a mark, it may be necessary to demonstrate advertising over time and to show that consumers associate your company with the mark through surveys in the relevant geographical area. It is much simpler to obtain a registered mark, which grants rights throughout the state of registration or, for federal registration, throughout the United States. Other benefits of federal registration include being allowed to use the ® symbol; having a legal presumption of ownership nationwide; having the exclusive right to use the mark on or in connection with the goods or services set forth in the registration throughout the U.S.; and having your trademark visible in the fully searchable PTO database of registered trademarks, which can often deter would-be infringers.

Marks do require some maintenance. Most importantly, a mark must be used consistently in connection with the product or service that you are selling. If your mark is protected only at common law, this is all that you must do. If your mark is registered in your state, it will need to be renewed periodically; you should consult your state’s registration authority (usually the Secretary of State). If your mark is federally registered with the PTO, a Statement of Use must be filed between the fifth and sixth year following registration, and the mark must be renewed every ten years. There are small fees associated with these actions.

The greatest benefit of having a trademark is that no one else can use your mark (or a confusingly similar mark) for the same or similar goods and services within the protected geographic area. If you have elected to protect your mark only by common law use, that geographic area is limited to the places where the mark is in use and widely enough recognized to be a source identifier. If you have registered your mark with your state, that geographic area is limited to the state of registration. If you have registered your mark federally with the PTO, that geographic area is throughout the U.S. It is also possible to register trademarks in other countries, many of which do not have any common-law use, so if you wish to use and protect a mark in a foreign country, you should speak with an attorney.

The greatest drawback to having a trademark is that if you do not search carefully enough before adopting it, you may find that someone else is already using it and you are an infringer. If you are infringing on someone else’s mark, you may be forced to change your mark and lose any goodwill you have built up in it.

Further Reading

Trademark section of the PTO website: http://www.uspto.gov/trademarks/index.jsp