Trademarks

• A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
• For the purposes of general trademark law (and this web page), the terms “trademark,” “mark,” “service mark,” and “trade dress” can be used interchangeably.

• Trademarks come in four forms
  1. common law trademarks
  2. state trademarks
  3. federal trademarks
  4. foreign trademarks

• A Common Law Trademark (unregistered) – The first and easiest way to obtain a trademark, and unfortunately the most common way, is to do nothing–just adopt the name and use it in commerce. If it becomes distinctive, either to the business or the product, a common law trademark comes into existence. Generally speaking, common law trademarks are limited to those particular products to which they have become distinctive, in the limited geographic region where the goods or services are marketed. This type of trademark is the most limited, but does give the holder certain rights.

• A Registered Idaho State Trademark is obtained from the Idaho Secretary of State’s Office in Boise. State registration gives you the right to exclude the later use of others of the same or confusingly similar trademark in Idaho only.

• “Do not confuse an Idaho trademark registration with a certificate of assumed business name or any other corporate documents filed with state or local governments. For instance, the certificate of assumed business name is filed with the county recorder primarily for the benefit of creditors and has absolutely nothing to do with obtaining a protectable trademark registration. The concept of protecting the name by filing a certificate of assumed business name is perhaps one of the most common misconceptions in business communities.”

• A Federal Trademark Registration provides the best protection available by giving you the right to exclude the later use of others of the same or confusingly similar trademark anywhere in the United States. There are two bases for federal trademark registration:
  1. In Use. The first is that the mark is being affixed to goods or services and is being used in interstate commerce. This is the traditional, long-standing criteria for obtaining a federal registration. If the mark has been used in interstate commerce for more than five years, it is presumed to be distinctive, and registration can usually be obtained without much problem.
  2. Intent to Use. The second, added by the Trademark Revision Act of 1989, enables one to obtain an approval of the registration based upon a bona fide intent to use the trademark in interstate commerce. This is a subtle distinction with major economic benefit.

• A Foreign Trademark Registration is usually on a country-by-country basis, and if your products are to be sold in other countries, you may wish to register trademarks in those countries. Trademarks registered in foreign countries do not affect your registration of the mark in the United States. If a trademark is already owned or an application has already been filed in the United States, the owner may file for foreign protection under the Madrid Protocol, which was enacted in November 2003.There are cost saving benefits by filing under the Madrid Protocol versus on a country-by-country basis. They include: the application can be filed in English (no translation costs), the application can be directly filed by my office (there is no need to hire a foreign attorney for filing), and there is one renewal date and one renewal fee.

Unlike patents, which exclude competition for a specified period of time and then expire, trademarks allow consumers to differentiate similar products made by different producers. In doing so, trademarks serve to protect market share. Ideally, a company can use patent protection to develop a product (possible 20 year term), and a trademark to protect its market share (possible perpetual term).

• First, have a trademark search conducted by an attorney to determine if other similar marks exist. A trademark search should not only look for similar marks, but phonetic equivalents, logos, designs, cancelled trademarks, and should give you an analysis of any less similar trademarks which might pose a likelihood of confusion with your trademark. A general computerized search will not be this exhaustive, nor will you have any idea regarding whether a likelihood of confusion exists.  While there is no requirement by the Trademark Office that a trademark search be performed, we often recommend that the client have such a search done before thousands of dollars are spent in marketing and advertising…building up goodwill in a company or product’s name.
• Second, have a trademark application filed for your trademark by an attorney. A properly filed trademark application will avoid common mistakes which will automatically result in a refusal to register your trademark application and/or (quite possibly) a loss of rights. Your trademark is too important to your business to lose–have it filed by a professional.
• Third, “prosecution” of the trademark application takes place. This is the process where the trademark examining attorney asks for additional information, asks an applicant to make changes to the application, and issues formal “refusals” to register for grounds such as “likelihood of confusion,” and “merely descriptive.” Once the examining attorney is satisfied that the trademark is registerable, the trademark will be published in the Patent and Trademark Office Official Gazette for opposition. The Official Gazette is routinely reviewed by law firms and corporations to ensure that no marks are being registered which are confusingly similar to other marks of clients of the firm or company. If opposition is filed, it is the applicant’s burden to prove that there is no likelihood of confusion between the proposed mark and the pre-existing mark.
• For “intent-to-use” trademark applications, after successfully negotiating the opposition phase, a notice of allowance will issue, and the applicant has six (6) months in which to certify actual use in interstate commerce and supply samples of its use.
• Of course, this is a highly simplified discussion of how to obtain a trademark. Again, if the trademark is worth obtaining, it is worth doing the job right. Find an attorney that you trust to file and prosecute the application for you.

• A Registered Idaho State Trademark is obtained from the Idaho Secretary of State’s Office in Boise. State registration gives you the right to exclude the later use of others of the same or confusingly similar trademark in Idaho only.
• Do not confuse an Idaho trademark registration with a certificate of assumed business name or any other corporate documents filed with state or local governments. For instance, the certificate of assumed business name is filed with the county recorder primarily for the benefit of creditors and has absolutely nothing to do with obtaining a protectable trademark registration. The concept of protecting the name by filing a certificate of assumed business name is perhaps one of the most common misconceptions in business communities.

• First, protect yourself and your business from the grief and aggravation, mainly from confusion, of two businesses or products having confusingly similar names.
• Second, often firms invest small fortunes in production, advertising, and packaging materials, only to be confronted with an outraged competitor who files suit for trademark infringement and unfair competition under the Lanham Act, seeking an injunction and an order confiscating the goods as counterfeit. More than one budding business has lost many thousands of dollars and suffered a false start in the market because a proper trademark search was not conducted.

• First, the continued validity of a trademark registration is dependent upon actual use of the trademark. In this sense, trademarks are not true property rights in that an express, or circumstantially proven, permanent intention to abandon the trademark is sufficient grounds to cancel a federal trademark registration.
• Trademark rights can also be lost through dilution. Dilution commonly occurs where competitors adopt very similar trademarks and the trademark holder takes no action to defend the mark.
• Another means of losing trademark rights occurs when the trademark becomes so identified with the particular, precise goods to the point where the mark loses its distinctiveness and instead becomes a generic descriptive term. An example most people are familiar with is aspirin, which was originally a trademark (owned by Bayer), but became so identified with acetylsalicylic acid tablets that it eventually turned into a generic term. Other companies are fighting to keep their trademarks from being found generic. These include Xerox ® for photocopiers.
• An actively used trademark can continue to exist, increase in value to the company, and increase the sales and profits of the company for an unlimited period of time.

• Not necessarily so. There is a concept known as trade dress, which prevents a second comer (one who adopts the idea later in time) from using a product that looks similar to a trademarked (registered or not) product which might cause confusion in the minds of the consumer. This is a sticky legal question.
• Trademark owners have the right to exclude others from using the mark on a similar product or for a similar service. However, the owner cannot prevent anyone from making, using or selling the product itself as long as it can be done without the use of the trademark.
• Trademarks should be taken seriously, both for infringement avoidance purposes and for product protection. Often a trademark eventually becomes a company’s most valuable intellectual property right.

• If your products are to be sold in other countries, you may wish to register trademarks in those countries. A Foreign Trademark Registration is generally acquired on a country-by-country basis, and trademarks registered in foreign countries do not affect your registration of the mark in the United States.
• If a trademark is already owned or an application has already been filed in the United States, the owner may file for foreign protection under the Madrid Protocol, rather than filing in each country separately. Filing under the Madrid Protocol can reduce costs considerably if more than one foreign registration is sought.