A word, symbol, or phrase used to identify a particular company’s product and differentiate it from other companies’ products

Product branding has a significant impact on purchasing habits.  In 1982, William F. Baxter, then Assistant Attorney General in charge of the Antitrust Division stated before the Senate Committee on the Judiciary:

“Trademarks play a crucial role in our free market economic system.  By identifying the source of goods or services, marks help consumers to identify their expected quality and, hence, assist in identifying goods and services that meet the individual consumer’s expectations…. [T]rademark counterfeiting … if freely permitted, … would eventually destroy the incentive of trademark owners to make the investments in quality control, promotion and other activities necessary to establishing strong marks and brand names.”

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is treated the same as a trademark, the difference being that service marks identify the source of a service rather than a product.  There are also other types of distinctive marks that may be protectable, including, sound, color, scent, flavor, and motion marks.

Each of these marks act as “source identifiers”, i.e., identify to the consuming public from whom the goods originate.  In contrast to patent rights (which may be used to prevent others from selling the goods themselves) or copyrights (which may be used to prevent others from distributing certain literary or artistic works of authorship), trademark rights may be used to prevent others from adopting the same or similar designation on the same, similar or related goods.

It should be noted that no company can acquire the exclusive rights to use a particular mark on everything – rights are limited to specific and related goods.  For example, both the McDonald’s Corporation and the Normark Corporation can prevent others from using the term BIG MAC®, the former on sandwiches and the latter on fishing lures.  In this example, the law grants both companies rights in the mark because it is unlikely that consumers of fishing lures would believe that they originate from the same source as that of sandwiches.

It is important to recognize that a primary goal of trademark law is to protect the public from being mislead as to the source, sponsorship, affiliation, or endorsement of goods.  To this end, the lawful trademark owner may obtain monetary damages for another’s unauthorized use of the mark and may obtain an injunction preventing further unauthorized use of the mark.  Damages may be trebled and attorneys fess may be awarded if the infringement is found to be willful.

In the United States, rights in a mark can be acquired solely by actual and legitimate use in commerce.  Thus, if your company has been using a certain mark to distinguish its goods or services from that of a competitor, it may have already acquired some trademark rights.  These rights may be used to prevent others from attempting to profit from the time and money that your company has been invested in establishing its reputation and goodwill.  However, absent obtaining Federal and/or State registration of the trademark, any such “common law” rights extend only to the geographical region in which the mark is being used – your company may not be able to prevent others from using the mark in an entirely different geographical region.

Trademark registration, while optional, affords several significant advantages.  Registration of a trademark provides a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide (or for State registrations, within the state).  Federal registration additionally provides the ability to bring an action concerning the mark in federal court, and the ability to prevent importation of infringing foreign goods.  Applications for California trademark registrations may be filed with the California Secretary of State.  Applications for Federal trademark registrations may be filed with the United States Patent and Trademark Office.

Any time rights are claimed in a mark, it is permissible to use the “TM” (trademark) or “SM” (service mark) designation to alert the public to the claim, regardless of whether an application for registration of the mark has been filed.  However, the registration symbol “®” may only be used after the mark is registered with the applicable governmental entity.

While it is not necessary to have an attorney file an application for registration (and in fact many companies choose to file a Federal application directly with the USPTO), trademark law is a complex area of law fraught with traps for the unsuspecting and unwary.  Almost daily, challenges to the validity of trademark registrations are brought, many of which are based on inadvertent errors in filing the application documents or the method in which the registrant uses the mark.  Trademark registrations of many great companies have been canceled, with the result that those companies are required to invest significant resources in developing, marketing, and protecting an alternative mark to recapture the goodwill that was embodied in their former mark.

It is impossible in this short space to fully address all aspects of trademark law.  However, it should be clear that when correctly established and maintained, trademark rights can protect a company’s valuable goodwill and further customer loyalty.  For more information, you should consult an intellectual property attorney (such as Mr. DiBuduo) that is knowledgeable in trademark matters.