Trademarks

What are trademarks? Trademarks are brand names that indicate the source of goods or services. As such, trademarks can become very powerful symbols. Well-known or "famous" trademarks (Coke®, Nike®, etc.) have enormous value just in their brand names because they are instantly recognizable and almost anyone can automatically associate them with a specific goods or services. The trademarks have become a shortcut to the consumer purchasing goods or services the consumer wants or believes he wants. Trademarks also do not require innovation or ingenuity. Often, someone begins to use a mark in association with goods or services, and the mark becomes recognizable, gaining prestige and advertising power.

The purposes for the existence of the trademarks and the reasons to have them protected are to make it cheaper and easier for the consumer to identify goods and services and to encourage production of quality goods and providing of quality services. I have represented small, medium and large businesses in obtaining trademarks and trademark disputes, including trademarks for store chains, diamond sellers, major alcoholic beverage brands, sports clothing and equipment, and others. I can help you protect your existing trademark rights, and I can also help you develop a plan to build and maintain a successful brand.

What can I use as a trademark? A trademark or service mark includes any word, name, symbol, device, expression, color, sound or any combination that is used or intended to be used in commerce to identify and distinguish the goods or services of one manufacturer or seller from goods or services of others, and to indicate the source of the goods or services. Logos, designs, and Internet domain names can be trademarked. Although with some degree of difficulty, surnames (persons' names) can sometimes be trademarked.

Why register a trademark? There is no requirement to register all trademarks that are used in commerce. Trademarks used in commerce that have not been registered can be denoted with a "™" symbol after the mark (this is called a common law trademark), rather than a "®" symbol reserved for registered marks that appear in the USPTO registry. However, federal trademark registration has several advantages: (1) a notice to the public of the registrant's claim of ownership of the mark, (2) a legal presumption of ownership nationwide, and (3) the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Many states offer state-level trademark protection. However, it is not better than the federal trademark protection because it is limited to the state. Basically, federal trademark protection has broader scope. Note that with valid, registered trademarks, just like with valid issued patents, you can prevent the importation of infringing goods into the United States.

Who can apply for a trademark registration? Anyone can apply for federal trademark registration in the United States (natural persons and corporations). There is no citizenship requirement to apply, but the citizenship of the applicant must be disclosed in the application.

How long is a trademark good for? Registered trademarks have a registration term of 10 years, with successive 10-year renewals. However, trademarks are somewhat different from patents and copyrights because trademarks do not expire so long as they are used in commerce. Thus, trademarks can theoretically last forever. There are some examples of very old, live trademarks: General Electric's "GE medallion", Carnation Brand condensed milk, and Nabisco's CREAM OF WHEAT logo have been around for over 100 years. The oldest U.S. trademark still in use is SAMSON, with the design of a man and a lion, registered on May 27, 1884, for use on cords, line and rope (Registration Number 0011210).

What are trademark searches? Trademark searches help determine whether there is already a trademark that is the same or similar to the one the applicant wants to use. The search can help determine both the subject matter and geographic scope of the existing trademarks. Conducting a trademark search is important for both determining whether your trademark can be registered and whether you can use your trademark in commerce without the danger of infringing someone else's trademark.

Are Internet domain names trademarks? They can be. Large, powerful companies have many domain names associated with their names and their brands. Very frequently, trademark disputes concerning the ownership of domain names arise between these companies and domain name registrants. These disputes are resolved through Uniform Domain-Name Dispute Resolution (UDRP), including UDRP administered by World Intellectual Property Organization (WIPO). All domain registrars must follow UDRP, and all domain name registrants agree to follow UDRP when they register a domain name.

If you wish to discuss your intellectual property matter, including patent, international patent, copyright, trademark, trade secret, or licensing, contact Leo Mikityanskiy today at 718-256-3210.