Trademarks,
Service Marks and Copyrights: Which One to Use?
By
Keith E. Whann
I.
The Difference Between a Trademark and Service Mark
A
trademark is defined as a word, phrase, symbol or design, or combination
of words, phrases, symbols or designs, which identifies and distinguishes
the source of the goods or services of one party from those of others.
A service mark is the same as a trademark, except that it
identifies and distinguishes the source of a service rather than a
product. Normally a mark for
goods appears on the product or on its packaging, while a service mark
appears in advertising for the services.
II.
How to Establish Trademark or Service Mark Rights
Federal
registration of trademarks and service marks is governed by the Trademark
Act of 1946, as amended, 15 U.S.C. §1051 et seq.; the Trademark Rules, 37
C.F.R. Part 2; and the Trademark Manual of Examining Procedure (2d ed.
1993). There are two types of
rights in a mark: the right to register and the right to use.
Trademark and service mark rights arise from either the actual use
of the mark or the filing of a proper application to register a mark in
the Patent and Trademark Office (PTO) stating that the applicant has a
bona fide intention to use the mark in commerce.
Federal registration is not required to establish rights in a mark
or to begin using a mark. In fact, anyone who claims rights in a mark may use the TM
(trademark) or SM (service mark) symbols with the mark to alert the Public
to the claim. It is not
necessary to have a registration, or even a pending application, to use
the symbols. However, federal
registration can secure benefits beyond the rights acquired by merely
using a mark. For example,
the registration symbol, ®, may only be used when the mark is registered
in the PTO. In addition, the owner of a federal registration is presumed
to be the owner of the mark for the goods and services specified in the
registration, and to be entitled to use the mark nationwide.
In
general, the first party who either uses a mark in commerce or files an
application in the PTO has the ultimate right to register that mark.
The PTO’s authority is limited to determining the right to
register. The right to use a
mark can be more complicated to determine, especially when two parties
have begun using the same or similar marks without knowledge of one
another and neither has a federal registration.
Only a court can render a decision about the right to use the mark.
A federal registration can provide significant advantages to a
party involved in a court proceeding because registrations are public
information and a party can determine if it is being used by conducting a
simple search of the PTO database.
III.
How to File a Trademark or Service Mark Application
An
Applicant for a Federal Registration may apply in three ways.
First, if the applicant has already started using a mark in
commerce, it may file a “use” application based on that use.
If the applicant has not yet used the mark, it may file based on a
bona fide intention to use the mark in commerce- an “intent-to-use”
application. For the purpose
of obtaining federal registration “commerce” means all commerce which
may be lawfully regulated by Congress. For example, interstate c commerce of commerce between the
United States and another country may be regulated.
If the mark is used only in local commerce within the applicant’s
state, it does not qualify as “use in commerce” but the applicant may
file for a trademark or service mark with its Secretary of State.
Finally, under certain international agreements, an applicant from
outside the United States may file in the United States based on an
application or registration in another country.
An
applicant is not required to conduct a search for conflicting marks prior
to filing an application with the PTO.
The application fee covers processing and search costs.
An examining attorney conducts a search and notifies the applicant
if a conflicting mark is found.
The standard for determining whether a conflict exists utilized by
the PTO is whether there would be likelihood of confusion or whether
consumers would be likely to associate the goods or services of one party
with those of another party . The
principal factors are the similarity of the marks and the commercial
relationship between the goods and services identified by the marks.
If a conflict does turn up and the mark cannot be registered, the
applicant will not receive a refund.
Therefore, some applicants conduct a search prior to filing a
registration application to avoid the expense of having the PTO do so.
The applicant may perform a search in the PTO public search library
or may visit a patent and trademark depository library which has CD-ROMs
containing the trademark database of registered and pending marks. In addition, either a private trademark attorney who deals
with trademark law or search company can provide trademark registration
information. The PTO will not
provide advise about possible conflicts between marks unless a
registration application is filed.
The
Length of time for the application process from the date of filing until
the receipt of a certificate of registration depends upon a number of
factors that can arise during the examination process.
For example, if an application is refused because of a pending
conflicting application, the later-filed application could be suspended
for several months or possibly one or two years until the prior-pending
conflicting application is either registered or abandoned.
Other factors include whether the application has been filed based
upon the “intent-to-use,” or whether a Notice of Opposition is filed
by a third party, both of which can cause delays.
If the application is based on “use in commerce” and there are
no substantive or procedural problems, it may be possible to obtain a
registration within 10-12 months. An
Intent-to Use application with no major problems and which is not opposed
by any third parties, could receive a Notice of Allowance within 10-12
months of the application filing date, but the application would not be
registered until the applicant files an acceptable Statement of Use along
with specimens showing the mark in use in commerce.
IV. How to Maintain a Trademark or Service Mark Registration
The
initial term and renewal term for a trademark or service mark is ten (10)
years. A renewal application cannot be filed until at least six (6)
months prior to the expiration of the marks registration.
However, between the fifth and sixth year after the date of initial
registration, the registrant must file an affidavit which must include a
specific list of the goods or services set forth in the registration and
indicating that the registrant is still using the mark on or in connection
with the goods or services listed, a specimen showing how the mark is
currently in use with the goods or services identified, i.e. a label or
package for goods or an advertisement for a service, and the required
filing fee. Note that the PTO
will not send an advance notice of the need to file an Affidavit or
Declaration of Continued Use but if an affidavit or declarations not
filed, the registration will be canceled.
Because the fees are subject to change over time, registrants are
encouraged to call the Post Registration Section of the PTO prior to
filing the Affidavit or Declaration of Continued Use or the Renewal
Application be to determine the proper fee and to ask specific questions
about the filing procedures to follow. |
