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There are two basic types of marks: trademarks and service marks. Trademarks identify the source of the goods, while service marks identify the source of the services. Some marks can qualify as a collective mark because they identify membership in an organization or, if they meet certain quality standards, as a certification mark.
You can use trademark protection to prevent others from copying your mark in an attempt to lure customers into purchasing their products or services, thinking it is yours. The rights in a mark can be used to maintain yourself as the exclusive source of a product or service. The rights to a mark are a business asset that can be sold or licensed to others.
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| Trademark Protection |
Trademark protection exists on three levels: Federal registration, State registration, and by common law.
Federal registration can be based on either actual use of the mark in interstate commerce or on a bona fide intent to use the mark in future interstate commerce. The first advantage of Federal registration is that the registrant obtains national priority rights from the date the application is filed. Without a Federal registration, the owner’s rights are limited to the areas where the mark has actually been used and the natural areas of expansion. The second advantage is that, after a five year period, with the filing of a declaration, a federally registered mark becomes “incontestable”, which significantly limits an infringer’s ability to attack the validity of the mark.
State registrations do not provide as many advantages as the Federal registration; however they are generally issued more quickly and at less cost. They do provide constructive notice of the claim of ownership within the state and will be listed in search reports obtained by others.
Common law marks are protected because they have been adopted and used, and the public recognizes the products or services identified by the mark as coming from a particular source.
In the current global market, you should seriously consider federal as well as international trademark protection.
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| The Trademark Search |
Whether or not you decide to pursue a federal trademark registration, you should have a professional trademark search completed in order to determine if your mark is eligible for adoption, use and federal registration. The search will also alert you as to whether your mark would be infringing upon another’s trademark rights.
If your mark contains both words and designs, it is wise to conduct searches for both. For word marks, a search should include federal registrations and applications, state registrations and common law marks nationwide. A design search should include federal and state records.
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| Applying for Federal Registration |
When the search indicates that a mark can be registered, you should apply as soon as possible. There are two options. If the mark is currently used in interstate commerce, you can file a “use-based” application. If it is not yet in use in interstate commerce, but you intend to do so, you can file an “intent-to-use” application.
The rights to a trademark may continue indefinitely provided the mark is not abandoned and does not become generic. Maintaining a federal trademark registration does, however, require the periodic filing of affidavits to verify continued, bona fide use of the mark.
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| Background |
Your United States trademark registration will only protect you against others from using your mark within the borders of the United States. Your U. S. trademark registration will not enable you to prevent others from using your mark outside of the United States.
In today’s global economy, you should consider seeking trademark protection in other countries. By filing an international application or applications in selected countries, you can safeguard your rights overseas, whether you are currently doing business overseas or are planning to do so in the future.
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| The International Application |
An International Application is based upon the Madrid Protocol, an international treaty ratified by the U. S. Senate in November of 2002. Beginning November 2nd, 2003, the U. S. Patent and Trademark Office will begin accepting applications from U. S. applicants. The Madrid Protocol allows you to protect your trademark in over 55 countries. A List of these countries is provided here. View List
The Madrid Protocol is administered by WIPO (the World Intellectual Property Organization). After registering your trademark, WIPO will publish your mark in the International Gazette. Once filed, a Madrid application can preserve the protection for your mark for up to 10 years. After the initial protection expires, you may renew protection for 10 year periods thereafter.
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| Protection in Non-Madrid Countries |
| Although many countries have adopted the Madrid Protocol, there are exceptions. Most notably, Canada and Mexico have yet to ratify the Madrid Protocol. It is still possible and affordable to protect your mark in these and other countries that have not yet signed onto the Madrid Protocol. This requires country by country registration and we will assist you in this endeavor if you so desire. |
