TRADEMARK PRIMER
This Primer gives answers to frequently asked questions about trademarks:

What is a trademark?
It is 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.

A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.

How do I establish trademark rights?
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has bona fide intention to use the mark in commerce regulated by the U.S. Congress. Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, 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.

There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, 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. This is particularly true when two parties have begun use of 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, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding.

How should I select a trademark?
In many cases business people select a mark on their own, with a consultant, invest money in artwork, and then take it to a trademark lawyer for protection. Generally we recommend that you consult with us early in the process, as the nature of the mark and the existence of previously registered similar marks determines its legal "strength. "

What kinds of marks are strong?
The "strength" of a mark is measured essentially by its uniqueness and is a factor in determining whether the mark is registrable and in litigation between competing marks. For analysis, marks are divided into categories:

1. A "fanciful" mark is the strongest. This is something that has no independent meaning and is created out of whole cloth, such as Kodak and Exxon. The practical drawback to this kind of mark is that it has no inherent relationship to the product for marketing purposes. Hence substantial amounts must be expended to establish a connection in the public's mind between the mark and the product.

"Arbitrary" trademarks occur when a well known word is arbitrarily used. Examples of these marks are Camel for cigarettes and Apple for computers. Arbitrary marks can be either strong or weak depending on how many usages of the mark there are and how frequently they are used by others as trademarks. For example the term "mustang" is used in the automobile business for various products and each mark may be used only to differentiate similar products in a narrow product line. On the other hand Apple has not been used in the computer industry by anyone except Apple Computer and hence it is a strong mark.

3. "Suggestive" trademarks are words that suggest but do not describe the product such as Computer World for retail stores selling computers, Coppertone Suntan Oil or Hula-Hoop plastic toy hoops. These can be registered but are ordinarily not legally as strong as fanciful or arbitrary trademarks.

"Merely descriptive" trademarks describe the quality, ingredients or characteristics of the product and as such may not be registered until evidence of secondary meaning has been established, i.e. when a significant number of people readily understand the name as referring to a product from a single source or origin. An example is the mark Nu-Enamel. Although this is clearly a merely descriptive trademark the court found that a secondary meaning had been established to indicate that the goods so marked were manufactured by the owner of the mark; hence the mark was registrable. Merely descriptive trademarks are weak marks.

5. "Generic" marks use common words in their common meaning and are not registrable. Examples would be "clothing" for clothing or "gas" for gasoline stations.

The best legal approach is to use a fanciful or arbitrary mark.

What if I want to use a very common word in my trademark?
Sometimes registration is possible only by disclaiming a well known word in the mark. Thus if you have a unique and fanciful design, you might be able to register the design including the common word but with a statement that you are disclaiming the use of the common word. This means that you would have no senior rights over junior users of the common word so long as the decorative aspects of the mark were not confusingly similar to the mark that you have registered. Also, this disclaimer may not avoid opposition proceedings from a senior user of the common word, even though not in a fanciful form.

Do I need to search for conflicting marks?
An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. In evaluating an application at the PTO, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.

To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same, only confusingly similar.

What searches are available?
The simplest search is the Internet at www.uspto.gov, maintained by the PTO. This lists active registrations of marks, and is useful for quick elimination of a proposed mark that is found to be in use. This runs several months behind the marks applied for, so absence of the proposed mark should not be relied on. At that point a full search by a reputable, established private trademark search company is advisable such as Corsearch, formerly Thompson & Thompson. This will uncover marks that have been proposed for registration, or have been abandoned or canceled. Patterns of private enforcement of trademarks can be gleaned from the search, warning the client off from marks drawing litigation. The full search includes state registrations, common law claims to trademarks and URL domain names. Common law listings are especially important since they may find a major regional user of the mark who could stop you from using the mark in his territory, even after you register it.

Currently such a company charges about $500 for a full search. Review of the results and issuance of a letter interpreting the report can take two or three hours of attorney time.

What's the difference between "TM, " " SM" and © symbols?
Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation 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 these designations. The claim may or may not be valid. The registration symbol, ®, may be used only when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues.

What's the "class" all about?
An International Schedule of Classes of Goods and Services establishes 34 classes of goods for trademarks, and 8 classes of services for service marks. The statute says the classes are for administrative convenience  only, implying that a trademark in one class protects against use of the mark in any other class. Nevertheless, an Application for Trademark that describes goods in several classes may draw a request from the examiner to register in several classes, at a filing fee of $335 each, plus additional legal expenses. This would seem to be desirable only if the client plans major marketing in several classes. Also registration in several classes helps in international registration in other countries