All About Trademarks

Trademarks

La
st 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 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:

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:
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:

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: