This article generally discusses the legal protection afforded by trademarks, and the logistics and approximate cost to obtain trademark protection.
Trademarks are a form of intellectual property. The term Intellectual Property refers to ideas, inventions and words or designs that are used to distinguish a product or business. The protection of intellectual property provides a competitive advantage to differentiate a business from its competition and help the business become a market leader. Some inventors or authors register their intellectual property and then license it or sell it for profit.
The laws in the United States provide various ways to protect intellectual property. The three main kinds of legal tools provided are: Trademarks, Copyrights and Patents. There are other forms of protection, including the Trade Secret.
Trademarks are mainly used by those who wish to reach out to future purchasers through phrases, names or symbols that differentiate these businesses from others. Examples of registered trademarks that are names or phrases are: Coca-Cola and Pepsi (the known beverage companies), McDonalds and Burger King (the known fast food restaurants), and phrases like “Just do It!” (Slogan for the sport gear company Nike.) The reader may also recall the phrase used by the Coca-Cola company: “Coke is it!”
Trademarks also protect colors and logos, among other property. Additionally, company names may be protected when they are used to identify products or services commercially offered by the business. Some book titles can be protected via trademark, as well, but not all. For a single title to gain trademark protection, it must have “wide promotion and great success.” Series titles are more likely to gain protection. There are other areas for trademark protection, such as famous people’s names. All the above areas merit separate writings, as the nature of protection can depend on several factors.
In general, when a business uses phrases, names or symbols to identify and distinguish a product or service in the marketplace, the business establishes a trademark that can be registered at a federal level under the Lanham Act. There is also trademark protection at the state level (e.g., in Florida, under Chapter 495 of the Florida Statutes) and under common law, although these last two offer limited protection that is not as strong as the federal registration.
To be “registrable,” a mark must be used commercially in the marketplace. This mark must be distinctive or be capable of turning into a distinctive mark with time, use and promotion. The rule “First in use, first in right” applies in the registration of trademarks. This means that the person or business that uses the mark first will obtain the right to use it if it can demonstrate “first use,” and there is no other valid registration for the mark.
If the mark used by the business is not distinctive, then this mark may not differentiate the business, and it is prone to use by others. In this case, there is no recourse for protection. If others copy the mark or use a similar mark, the business clients will be confused as to the identity of the owner of the mark. They might think the two businesses belong to the same provider. Such confusion will generate an obstacle to differentiation, since the customer will not be able to tell who offers the product under the similar marks. Eventually, the business presence will be “diluted” in the marketplace, and the business will risk being an unknown by the market. The “worst case scenario” will be when a “copycat” uses a mark belonging to the business that had it first. If this copycat has poor reputation, the original business will risk injury from such poor reputation, as well.
Trademark terminology includes the following types of marks:
- Generic marks – This is a category to which the actual product belongs. For example, car, home, newspaper, copies, warehouse. Generally, a person or business may not register generic marks. The applicable rule is that no one can “reserve” as a trademark any word that is constantly used in the daily vocabulary to designate the very product the mark represents. For instance, registering the mark “car” for a car is not allowed since this mark does not differentiate the car from other cars.
- Descriptive marks – These marks merely describe the class to which the product belongs. For example: “General Medicine Doctor” and “Upscale Hair Salon.” Similar to registering generic marks, a person or business may not register descriptive marks for the same class to which the product or service belongs.
- Suggestive marks – These marks include in them an element of the product or service, without being descriptive. For example: “Pizzeria Uno” (for a pizzeria) or “Split Ends” (for a hair salon). These marks are registrable because they are distinctive.
- Arbitrary or “Fanciful” marks – These marks are actually invented. For example: “Tylenol” or “Advil” (for medicines), “Band-Aid” (for medicated adhesive bands) or “Panasonic” (for electronic equipment). These marks are stronger for registration purposes because they are distinctive. The owner of the mark must ensure no one uses the fanciful mark as a designator for the actual name of the product (e.g., use of the word Band-Aid as a “generic” name for any adhesive band) as this may cause the trademark to lose its protection.
If the brand is suggestive or fanciful, then it is automatically distinctive and therefore, it becomes ‘registrable,’ as long as it is used in commerce to differentiate products or services.
Protection under “Common Law” – This protection refers to the minimum legal protection afforded under common law. Under common law, the mark is minimally protected without registration. The requirement for protection is to write right next to the mark the letters “TM” (for products and other names) or “SM” (for services). The reader may notice the symbol (ä) positioned generally as a superscript on the right hand side of the mark (although this location is not mandatory.) For example: GoWest™. The disadvantage with the common law protection is that if someone copies the mark without it being previously registered, the owner must prove first ownership of the mark. The process of filing a lawsuit to demonstrate mark ownership can be very onerous and costly.
Trademark Protection through State Registration – The mark can also be protected by registration at a state level. The mark must be registered under the specific class of products of services consistent with those that the mark identifies. The protection offered with this registration is limited geographically to the state where the mark is registered. That is, if the mark is registered in Florida the mark is only protected there. To give public notice that the mark has been registered, the owner also uses the superscript symbol (ä) next to the mark, as described for the common law situation. The difference between common law and state registration is that with the latter, the mark is registered with the state’s trademark agency, and this provides evidence of ownership to others. The state registration also provides similar benefits to those afforded by the federal registration. However, this protection is limited to the state’s jurisdiction.
Trademark Protection through Federal Registration – A mark registered at a federal level offers much broader protection, and it gives others notice of who owns the mark in the specific registration class. After the mark is registered, if the owner discovers a similar or equal mark in the market for the same class of products and services under which the mark was registered, the owner can demand that the infringer stop using the mark. Because the mark is registered at a Federal level, the owner will not have to demonstrate ownership of the mark. This would make it much easier and less costly to prosecute. Additionally, federal registration provides the owner with rights to recover monetary damages from the infringer who used the mark without the owner’s permission. To denote a mark that is federally registered, the symbol ® is used next to the mark, instead of the symbol (™). For example: GoWest®.
Reiterating the above, common law and state law protection are not as strong as the protection offered by federal registration. Additionally, only federal registration provides a right to use the symbol ®, which denotes the stronger protection. With the common law protection and state registration the mark can only bear the symbols (™) or (SM).
Marks registered federally last 10 years and they must be renewed periodically to verify their use in commerce. A mark owner can renew the mark every 10 years and is responsible for demonstrating its use and for protecting the mark. Otherwise, the owner can lose the protection before the mark’s expiration date. In addition, a business or individual mark owner must submit a declaration of continued use (or if there has been an interruption in use, an excuse for non-use) between the fifth and sixth year of registration.
Marks registered at a state level in Florida last 5 years and must be renewed six months prior to expiration. Like with marks registered at a federal level, the owner is responsible for demonstrating the mark’s use in commerce during the life of the mark. Other states may have different requirements.
Cost and Registration Process
The agency cost for registration varies depending on the registration process, and it is subject to change at any time. At the time of writing this article, the agency cost for federal registration for a mark, if the mark is used in commerce, is of $325 per mark, per class, for an application submitted through the electronic system at the United States Patent and Trademark Office (USPTO). If the mark has not yet been used in commerce, the applicant may submit an “intent to use” application for $325 (if electronically submitted) and when the mark is used in commerce (within a specified deadline), the applicant must submit another application to show evidence of use and pay an additional $100 to register the mark. After the evidence of use is submitted, the examiner will evaluate the mark, and if approved, it will be published for opposition. If there is no opposition, the mark will register in due course. Generally, this process can take around 18 months, but this timeframe may vary depending on the mark and the circumstances.
The total cost for legal services by an attorney qualified to register a basic trademark application at a federal level depends on the attorney and the type of mark, as well as the time the attorney invests on exchanges with the client and the trademark office examiner to, for example, provide evidence of use, answer correspondence from the USPTO or respond to an opposition, among other circumstances.
At a state level, in Florida, the agency cost to register a mark is $87.50 per class (at the time of this writing.) This cost is subject to change, and it is lower than the federal cost. However, the federal protection is broader, as discussed earlier in this chapter. The cost for legal services varies, but it is typically less than the federal registration.
Many trademark registration services offered via the Internet generally do not include the level of legal analysis and counseling provided by a qualified attorney. These are clerical services limited to the systematic submittal of an application without legal counseling, analysis, research or follow-up. Therefore, a trademark applicant should seriously consider engaging a qualified legal provider of their choice who will focus on the successful registration of the mark.
For more information on Trademarks, visit http://www.uspto.gov.
* This material is an excerpt from the book “Does Your Compass Work? Practical Legal Guide for Florida Businesses.” Copyright © 2008-2015 Yasmin Tirado-Chiodini. All Rights Reserved. This excerpt is provided under a Creative Commons License.