Trademark Basics by Brandon U. Davidson
Trademark Basics
by Brandon U. Davidson, Watanabe Ing,
Intellectual Property Technology and Internet Law Group
According to at least one study, American children are more likely to recognize the McDonald’s Golden Arches logo than the Christian cross. They are more likely to recognize Ronald McDonald than Santa Claus. These surprising examples illustrate the prevalence and effectiveness of advertising. U.S. businesses certainly believe in advertising, having spent $143.3 billion on advertising in 2005 alone.
As any business knows, one of the primary purposes of advertising is to develop brand awareness with consumers. Once a brand identity is developed, it needs to be protected. This protection is at the heart of trademark law. However, many people are unfamiliar with even the basics of trademark law. This article provides a brief introduction to the subject.
What Are Trademarks, Service Marks, and Trade Names?
The term "trademarks" actually refers to three different types of intellectual property: trademarks, service marks, and trade names. Although the three are very closely related, there are important differences between them.
As a general rule, a trademark is a word, phrase, or graphic that is used in connection with goods and indicates the source of those goods. While this might sound complicated, it is actually something that is familiar to everyone. For example, if you were buying coffee, you would be confronted with packages bearing labels such as "LION COFFEE" and "HAWAII COFFEE COMPANY”. Each of these phrases is a trademark. If you buy coffee regularly, you probably have an impression about the quality of "LION COFFEE" coffee and "HAWAII COFFEE COMPANY" coffee. If your experience suggests that these brands of coffee are especially flavorful, then when you are shopping, you will look for these brand names.
A service mark is essentially identical to a trademark except that a service mark is used in connection with services, while a trademark is used in connection with goods. An example of a service mark is "THE POWER OF YES", which is used by First Hawaiian Bank in connection with its financial services.
Unlike a trademark and a service mark, a trade name is the name under which a person or company does business. The average consumer might not be familiar with Pomare, Ltd., but most people in Hawaii have heard of "HILO HATTIE", Pomare, Ltd.'s trade name.
The same word or phrase can be a trademark, service mark, and trade name. "HILO HATTIE" is a good example. When the phrase "Hilo Hattie" is used on labels or hangtags affixed to clothing, hats, beach bags, or any of a number of other products, "HILO HATTIE" functions as a trademark. When the phrase "Hilo Hattie" is used in connection with transportation and tour services, such as when Pomare, Ltd. transports tourists to its factory and provides factory tours, "HILO HATTIE" functions as a service mark.
How Do You Protect Your Rights in Trademarks, Service Marks, and Trade Names?
Your company's trademarks, service marks, and trade names are valuable assets that need to be protected. Imagine how upset you would be if you were Pomare, Ltd. and someone completely unrelated to you started selling clothing labeled with "HILO HATTIE".
In order to protect your rights, it is best to register your trademark, service mark, or trade name. If you are using your trademark or service mark in interstate commerce, you are eligible to apply for a federal registration with the United States Patent & Trademark Office (the “USPTO”). However, trade names cannot be registered federally. As part of the federal application process, an attorney who works for the USPTO will scrutinize your application and determine whether you are entitled to a registration. If the USPTO attorney approves your application, there is a three month period during which people can object to your application. If no one makes an objection or if you overcome the objection, your trademark/service mark will be federally registered. As long as you continue using your trademark/service mark and make the required renewal payments, you can maintain your federal registration indefinitely.
While federal registration is generally recommended, it is not always appropriate. First, the process can be expensive and time-consuming. Second, trade names cannot be registered federally. Only trademarks and service marks are eligible for federal registration. Third, use in interstate, as opposed to intrastate, commerce is required for federal registration.
An alternative to federal registration is a state registration with the Department of Commerce & Consumer Affairs (“DCCA”). Trademarks, service marks, and trade names can be registered with DCCA. Unlike the USPTO, DCCA does not rigorously scrutinize the application. As long as your trademark, service mark, or trade name has not already been registered, you will likely be able to obtain a state registration. Like a federal registration, a state registration can be maintained indefinitely as long as post-registration requirements are satisfied.
An important caveat is that although registration is important, trademark rights are based on first use in commerce, not mere registration. As a result, even if you have a state or federal registration for a trademark, your rights in the trademark would be trumped by a third party who can prove that it was using that same trademark before you started using the trademark.
Conclusion
Whether you obtain a state or federal registration, protecting trademarks, service marks, and trade names is essential for any business. Armed with some basic knowledge of trademark law, you will now be able to more effectively protect some of the most important assets of your business.
This article is intended to address issues of general interest, is not intended to be construed as legal advice, and does not take the place of consultation with qualified legal counsel.
by Brandon U. Davidson, Watanabe Ing,
Intellectual Property Technology and Internet Law Group
According to at least one study, American children are more likely to recognize the McDonald’s Golden Arches logo than the Christian cross. They are more likely to recognize Ronald McDonald than Santa Claus. These surprising examples illustrate the prevalence and effectiveness of advertising. U.S. businesses certainly believe in advertising, having spent $143.3 billion on advertising in 2005 alone.
As any business knows, one of the primary purposes of advertising is to develop brand awareness with consumers. Once a brand identity is developed, it needs to be protected. This protection is at the heart of trademark law. However, many people are unfamiliar with even the basics of trademark law. This article provides a brief introduction to the subject.
What Are Trademarks, Service Marks, and Trade Names?
The term "trademarks" actually refers to three different types of intellectual property: trademarks, service marks, and trade names. Although the three are very closely related, there are important differences between them.
As a general rule, a trademark is a word, phrase, or graphic that is used in connection with goods and indicates the source of those goods. While this might sound complicated, it is actually something that is familiar to everyone. For example, if you were buying coffee, you would be confronted with packages bearing labels such as "LION COFFEE" and "HAWAII COFFEE COMPANY”. Each of these phrases is a trademark. If you buy coffee regularly, you probably have an impression about the quality of "LION COFFEE" coffee and "HAWAII COFFEE COMPANY" coffee. If your experience suggests that these brands of coffee are especially flavorful, then when you are shopping, you will look for these brand names.
A service mark is essentially identical to a trademark except that a service mark is used in connection with services, while a trademark is used in connection with goods. An example of a service mark is "THE POWER OF YES", which is used by First Hawaiian Bank in connection with its financial services.
Unlike a trademark and a service mark, a trade name is the name under which a person or company does business. The average consumer might not be familiar with Pomare, Ltd., but most people in Hawaii have heard of "HILO HATTIE", Pomare, Ltd.'s trade name.
The same word or phrase can be a trademark, service mark, and trade name. "HILO HATTIE" is a good example. When the phrase "Hilo Hattie" is used on labels or hangtags affixed to clothing, hats, beach bags, or any of a number of other products, "HILO HATTIE" functions as a trademark. When the phrase "Hilo Hattie" is used in connection with transportation and tour services, such as when Pomare, Ltd. transports tourists to its factory and provides factory tours, "HILO HATTIE" functions as a service mark.
How Do You Protect Your Rights in Trademarks, Service Marks, and Trade Names?
Your company's trademarks, service marks, and trade names are valuable assets that need to be protected. Imagine how upset you would be if you were Pomare, Ltd. and someone completely unrelated to you started selling clothing labeled with "HILO HATTIE".
In order to protect your rights, it is best to register your trademark, service mark, or trade name. If you are using your trademark or service mark in interstate commerce, you are eligible to apply for a federal registration with the United States Patent & Trademark Office (the “USPTO”). However, trade names cannot be registered federally. As part of the federal application process, an attorney who works for the USPTO will scrutinize your application and determine whether you are entitled to a registration. If the USPTO attorney approves your application, there is a three month period during which people can object to your application. If no one makes an objection or if you overcome the objection, your trademark/service mark will be federally registered. As long as you continue using your trademark/service mark and make the required renewal payments, you can maintain your federal registration indefinitely.
While federal registration is generally recommended, it is not always appropriate. First, the process can be expensive and time-consuming. Second, trade names cannot be registered federally. Only trademarks and service marks are eligible for federal registration. Third, use in interstate, as opposed to intrastate, commerce is required for federal registration.
An alternative to federal registration is a state registration with the Department of Commerce & Consumer Affairs (“DCCA”). Trademarks, service marks, and trade names can be registered with DCCA. Unlike the USPTO, DCCA does not rigorously scrutinize the application. As long as your trademark, service mark, or trade name has not already been registered, you will likely be able to obtain a state registration. Like a federal registration, a state registration can be maintained indefinitely as long as post-registration requirements are satisfied.
An important caveat is that although registration is important, trademark rights are based on first use in commerce, not mere registration. As a result, even if you have a state or federal registration for a trademark, your rights in the trademark would be trumped by a third party who can prove that it was using that same trademark before you started using the trademark.
Conclusion
Whether you obtain a state or federal registration, protecting trademarks, service marks, and trade names is essential for any business. Armed with some basic knowledge of trademark law, you will now be able to more effectively protect some of the most important assets of your business.
This article is intended to address issues of general interest, is not intended to be construed as legal advice, and does not take the place of consultation with qualified legal counsel.