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Trademarks and service marks identify and distinguish the goods or services of one person or business from those of another.  They are a primary component of their owners’ marketing and advertising strategies in that they inform the public about who makes the goods, or who provides the services, that they might be interested in purchasing.  Brand names and logos are common examples of trademarks, but slogans, colors, sounds, or even aromas may be trademarks as well.  A trademark’s value comes from its public use, and a trademark can last as long as it is used properly.  Trademarks do not need to be registered with the United States Patent and Trademark office, but federal registration does confer certain advantages.  Trademarks that are not federally registered are marked with a “ ™ ” symbol (service marks similarly are marked “ ℠ ”), whereas those that are may be marked with the familiar “ ® ” symbol.

  • Generally, the first person or company that uses a trademark or service mark in connection with specific and identifiable goods or services in a particular territory is entitled to the exclusive right to use that mark for that purpose.
  • Marks must be “distinctive” in that they must identify their respective goods or services in such a way as to distinguish them from similar goods or services sold by another.
  • A mark that is simply generic (g., “Apple” for an apple) will not qualify as a trademark, nor will a mark that is confusingly similar to a previously existing mark for a similar good or service. On the other hand, a descriptive mark that, through its use, acquires a secondary meaning that identifies particular goods or services (e.g., “Apple” for a computer) may be protected.

Owners of trademarks and service marks are responsible for monitoring the activities of their competitors and others to ensure that (1) their marks are not being used improperly or without permission, and (2) others’ marks are not being used in ways that are likely to create customer confusion with their own goods or services.

Similarly, trademark owners must take care that they (and their authorized licensees) use their marks properly, in order to enhance and maintain the strength of marks.  This includes avoiding uses that might render the marks descriptive or generic—for example, by referring to “Kleenex®” as a product that one uses rather than as a brand of facial tissue, or to “Velcro®” as a fastener product in and of itself rather than as a brand of fabric hook-and-loop fastener.  A good rule of thumb in this regard is to use protected marks are used as adjectives, rather than as nouns or verbs.  Trademark owners also should consider the following issues:

  • Identification:  Are you able to identify and provide notice of what your trademarks are, even if they are not registered?  Do you use trademark-related designations such as “ ™ ” or “ ® ” whenever you use your marks?
  • Protection:  Do you have a plan to protect your trademarks, and are you implementing that plan?  Do you monitor the marketplace regularly and consistently to ensure that your marks are used only by authorized users and in accordance with your quality control standards?

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