At Branfman Law Group we have literally searched, cleared and registered hundreds of trademarks and service marks. We also help our clients develop great legally enforceable trademarks and we enforce our client’s trademark rights by taking appropriate legal actions ranging from simple demand letters to filing lawsuits when necessary.
Every business uses trademarks and service marks to identify goods and services. A strong trademark or service mark often makes the difference between a wildly successful business and its not-so-successful competition.
Examples of this phenomenon are “Mrs. Field’s” for cookies and “Apple” for computers. The Xerox Corporation spends tens of thousands of dollars each year reminding the public that “Xerox” is not a verb.
But what is a trademark? A trademark consists of words, stylized print style and logos (or combinations of the three) that identify a product from a particular manufacturer of distributor. For example, “Apple” for computers, “Xerox” for photocopy machines, and “Ivory” for soap are trademarks.
A service mark is like a trademark, but it identifies services instead of goods or products. “Daisy Dry Cleaning” identifies a dry-cleaner; “HBO” is a service mark of Home Box Office, Inc., identifying its television programming services.
The general rules applying to trademarks and service marks are essentially the same. For the remainder of this article the term “trademark” will include service marks.
Trademarks and service marks, however, differ from trade names. A trade name is the name of a business, but is not necessarily a trademark or service mark. For example, “HBO” is the service mark, but the trade name of the business is Home Box Office, Inc.
Unlike patents and copyrights which are valid for a fixed number of years, a trademark is valid as long as it is used. Traditionally, a trademark could not be reserved in advance; it had to actually be used before any rights in the mark arose. But now a federal trademark application can be filed without actual use if it’s based on an “intent to use” the trademark within a specified amount of time. On the state level, once the mark is used, it can be registered in every state where the product is sold or the service rendered under mark.
Registration gives the owner of the mark greater rights and power than mere usage, including the right to obtain a court injunction to prohibit an infringer from using a mark confusingly similar to yours. In many cases this can reduce the possibility of a long, drawn-out court battle.
A registered trademark can also be very valuable for licensing to others. For example, the “Op” mark is licensed to hundreds of businesses; the owners of the mark don’t actually make a single stitch of clothing.
A trademark is also valuable because it helps distinguish your business from your competitor’s and the good will of your business becomes intertwined with your reputation and trademarks. Several years ago a court reduced the sale price of a business by over 50% because the seller’s alleged trademark was not capable of being protected or registered.
However, an important rule is that a trademark cannot be descriptive of the product or service. It must be fanciful and creative and capable of distinguishing your products and services from those of others. For cookies “Mrs. Field’s” is a fanciful and creative trademark, but “Yummy Chocolate” is descriptive and registration of the mark would probably be denied.
In sum, a good, strong trademark can become a very valuable asset of your business because it helps to identify you and separate you from your competitors, and your customers may continue to buy from you and buy new products from you purely based on the strength of your mark.
The development and protection of your marks is a business opportunity that should not be overlooked.