A trademark is something which is used to distinguish a product from the same or similar products sold by other companies. A trademark identifies the source of product. It does not designate the kind or type of product. Trademarks can include any one or a combination of the following:

· a word or collection of words;

· a name;

· a symbol or logo type;

· a design of a container;

· distinct indica applied to goods (such as the stripes on tennis shoes);

· ornamentation applied to a product (such as the checkered stripe around a cab);

· a number or set of numbers (such as 7-eleven);

· a series of letters (such as the call letters for a radio station);

· a sound or series of sounds (such as a combination of notes);

· a three dimensional object (such as the Rolls Royce radiator);

· a color or color combination, if distinctive;

· a phrase;

· a telephone number; or

· a fragrance

A service mark has many of the same characteristics as a trademark, except that it identifies services instead of products. To acquire rights in a service mark, the mark must be used in connection with services provided for the benefit of others, not services delivered solely for the benefit of the company using the service mark. In most instances, the same rules apply to service marks as apply to trademarks.

Generally, using a trademark creates trademark rights. This means many people may have trademark rights even if they do not file a trademark application.

The major benefits of federal trademark registration are that it establishes the registrant's claim to:

· ownership of the trademark;

· exclusive use of the trademark in the United States; and

· certain procedural rights, including the right to recover profits and damages in an infringement suit.

A trademark should be memorable. It should attract the eye, ear and mind of the potential purchaser. It should elicit desirable consumer responses and otherwise be distinctive. Different types of trademarks give you stronger or weaker rights.

Coined trademarks are the strongest type of trademarks. Such a trademark is a word that has been created and is meaningless aside from its product. An example of such a trademark is "KODAK".

Arbitrary trademarks use ordinary words in a fanciful way, such as "LUVS" for diapers. Arbitrary trademarks are given a broad scope of protection and are generally very strong.

A suggestive trademark is not descriptive, but it hints at the nature of the goods. It requires imagination, such as was involved with the selection of "Rent-A-Wreck" for car rental services. Such a trademark makes the public stop and think. Suggestive trademarks may be registerable depending on the level of "distinctiveness" and absence of "descriptiveness."

A trademark which indicates an immediate idea of ingredients, qualities or characteristics of a product makes the trademark descriptive and consequently weak. To overcome such weakness and to acquire greater rights and protection, a descriptive trademark must attain secondary meaning. Secondary meaning arises only after the public associates the trademark with the product through its wide use.

To use the name of an article as a trademark results in a generic trademark. The user of a generic trademark may not acquire exclusive rights and may not obtain a federal registration. A well known trademark can become generic by losing its indication of source through its wide use. Well known trademarks such as THERMOS, ESCALATOR and KEROSENE have become generic terms.

Trademarks are protected under Common Law, State Statutory Law, and Federal Law. By using a trademark in commerce, the trademark user is granted "common law" rights in the geographical area where the mark is used. Common Law rights are often hard to prove. State rights may be obtained by obtaining a State registration. Federal rights are the most comprehensive and require obtaining a Federal registration. To obtain a Federal registration, the mark must be used in or affect interstate commerce.

You can conduct a preliminary search using the Dialog database (which includes the records of the U.S. Patent and Trademark Office and State trademark records) or the U.S. Trademark Office website to determine the trademark's availability for Federal registration. If the search finds another party has the same or comparably similar trademark in connection with the same or similar goods then it is advisable to select a different trademark.

If no use of the identical trademark is discovered, a full search through a commercial search firm may be ordered which will report federal, state and common law uses. A full search and opinion is strongly recommended prior to using any trademark and/or trademark design because this may also identify others who may have pre-existing Common Law or State Registration Rights.

To obtain federal registration rights, the trademark must be used in interstate commerce or intended to be used in interstate commerce. An "Intent to Use" application may be filed in cases where there is a bona fide intent to use a trademark in interstate commerce if the use has not actually begun. This method "locks in" the filing date as the effective date of first use to reserve the mark and prevent other parties from obtaining rights to the trademark between the filing date and the date actual use is commenced. Intent to use applications, however, generally cannot be transferred.

Many states have trademark registrations available, and a state registration can be used to secure rights throughout the state.

Yes. Trademarks rights can be lost if:

· the trademark is no longer used in commerce for two consecutive years, or if
the trademark has been discontinued with the intent not to resume use.

· the trademark owner permits others to use confusingly similar trademarks in commerce.

· the trademark becomes generic through widespread misuse (where the public no longer identifies the trademark with the registered product but with all goods of the same general nature).

· you license others to use your trademark without controlling their use of the mark.

To protect your rights you should bring claims against infringers and police use by licensees.

It is also important to avoid the conversion of a trademark to a generic name by making certain the public recognizes the trademark as a trademark and knows an appropriate generic term by which the product can be identified as to kind or type. For example, you photocopy a document on a Xerox copier. You do not "xerox" a document.

When applying for a U.S. registration, consideration should be given to international market plans and whether to also register the trademark in other countries. The legal requirements in other countries may vary from the U.S., and in many cases the application must be filed within a specified time after the U.S. application is filed.

Factors to consider in determining whether to apply for foreign registration include:

· Where are sales most likely to occur initially in substantial volume, including export territories of licensees.

· What is the next group of countries where sales are most likely to occur.

· Where would the trademark owner want to prevent competition from using the trademark although there are no immediate plans to use it.

· Is the trademark of a type that might be appropriated by a pirate in high risk piracy jurisdictions such as Brazil, Japan, Korea, Taiwan or Singapore.

· How difficult would it be to devise a separate trademark for countries where no application is filed.

· Will sales warrant the filing expenses if only limited amounts of exports are involved?

Typically a minimum of $1,000 to prepare and file a Federal application in one class of products or services, but more if its becomes difficult to properly describe the goods and services. Responses may run between $500 and $2,000 or more, each, depending on the complexity of the refusal to register.