All About Trademarks
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Trademarks
Last month we explored copyright protection. This month we will review trademarks.
Last month we explored copyright protection. This month we will review trademarks.
You may have some questions about this topic like: What is a trademark? What's the difference between trademarks and service marks? or What are certification or member marks? We plan to answer some of those questions in this article.
Let's start off by asking a few questions concerning how your company is handling the issue of trademarks currently. First, does your company have a policy for protecting your trademarks and those of your clients? Secondly, if you do have one, does your policy address registration and post-registration of the trademark? Lastly, is monitoring for infringement part of your policies and procedures?
Types of Marks
A trademark is a word, slogan, phrase, logo or design that is used by a person or an entity that distinguishes and identifies a product or service. Trademarks can also be colors, sounds, scents, tastes, textures, motions, product designs or configurations. Service marks are generally the same except they promote services and not tangible products.
A trademark is a word, slogan, phrase, logo or design that is used by a person or an entity that distinguishes and identifies a product or service. Trademarks can also be colors, sounds, scents, tastes, textures, motions, product designs or configurations. Service marks are generally the same except they promote services and not tangible products.
A certification mark is owned by a party that certifies goods and services of others when certain standards are met. Certification marks can be acronyms, such as CMP or CAE.
Collective membership marks are used by members of an organization to show they are members.
Collective marks are used by a collective group to indicate that the goods and service they provide meet a certain standard.
What is the difference between certification mark and a collective membership mark or a collective mark? A certification mark can be used by anyone who meets the specific standards defined by the organization for the certification mark. They do not have to be members of an organization to use the mark. Collective membership marks or collective marks may only be used by those who are members of the group or organization.
Acquiring and Registering Trademark Ownership
Trademarks do not have to be registered and ownership is established by actual use. An entity that first uses the mark is usually given priority as the owner of the mark. The mark must be used continuously to maintain ownership.
Although it is not necessary to register a mark there are a number of reasons to do so as follows:
- It provides formal notice that you are using the mark.
- Shows presumption that the mark is valid.
- Can use the ® symbol.
- Protection does not expire.
- The mark is easier to protect.
- Marks can be registered with social media outlets and they will defer to those that are registered.
- Can sue if federal court for infringement.
Protecting Against Infringement
Proper registration is crucial and the mark must be registered in the correct category and class, must describe all goods and services provided under the mark and the proper design or logo must be submitted.
It is important to follow the correct post-registration requirements in order to continuously protect the mark:
- File Section 8 and 15 Statement of Use and Incontestability between the 5th and 6th year after registration.
- File Section 8 and 9 Statement of Use and Renewal between the 9th and 10th year.
Failure to file will result in abandonment of the mark and the U.S. Patent and Trademark Office will not issue notices.
There are five ways a trademark can be abandoned:
- Non-use.
- Licensing and co-branding – to ensure protection make sure an agreement that specifies the limited use of the mark is in place.
- Naked Licensing – occurs when there is no license of written agreement covering the use of the trademark. The organization would then not have contractual rights to inspect and supervise the use of its logo.
- Generic use.
- Failure to police the marks.
Monitor for Infringement
The widespread use of social media can have an immediate and global impact on a trademark and the infringement of it. It is important to monitor for infringement by:
- Focusing on the sites most used by your clients and your industry and monitor those closely.
- Training your staff to recognize misuses of the mark.
- Implementing a notification process for members and staff when they observe infringement.
