How to protect your trademark

Does your company have a trademark that uniquely identifies you as the source of the product or service that you provide to your customers? If so you need to protect that trademark or service mark for your product or service by:

1. Putting the world on notice that you claim common-law rights in the mark; and
2. By registering it with the United States Patent and Trademark Office (USPTO).

There is a common misperception that in order to get a trademark you have to register the Mark with the federal government (USPTO). People often come to my office saying

“I want to trademark this logo or this name.” My response is “you trademark something the moment you use the Mark in conjunction with goods or services.”

What you want to do is register the trademark with the federal government in order to preserve your statutory rights in the Mark. But you gain superior common law intellectual property rights in your trademark by using it in public before anyone else.

Prior use of the Mark in conjunction with the particular goods and service is a good defense over a registered Mark that is based upon a later use in commerce. However, the best way to protect your rights is:

• to be the first entity to use the Mark and
• the first entity to register the Mark.

Being able to claim first use and first registration provides you with a good offense and a good defense.

A trademark and a service mark provide a unique identity to a product or service. Do you understand the differences between a trademark and a service mark? And do you know how to put the world on notice that you claim legal intellectual property rights in your mark?

What is the difference between a Service Mark and Trademark?

• A Trademark is a unique logo, brand, name, design or a symbol used in the marketing and advertisement of a product of a company to make it unique, allowing consumers to know the source of the product sold in commerce.

• A Service mark is equivalent to trademark, and the only difference is that a service mark is used to differentiate a services of of a company rather than goods.

What is the proper use for the TM, SM and ® symbols?

There are no federal regulations governing the use of the designations “TM” or “SM” with trademarks. Use of the symbols “TM” or “SM” (for trademark and service mark, respectively) indicate that a party claims rights (common law rights) in the mark and are often used in commerce before a federal registration is issued. The TM, SM and ® symbols are not considered part of the mark.

Anyone who claims intellectual property common law rights in a mark may use the TM (trademark) or SM (service mark) designation to alert the public to the claim, regardless of whether there is a filed trademark application with the USPTO. This claim may not be valid, but does establish the owner’s belief that the mark is protectable.

The federal registration symbol ® may be used once the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark is actually registered.

The federal registration symbol should only be used on goods or in conjunction with advertisement of services that are the subject of the federal trademark registration. Although, several foreign countries use the registration symbol ® to indicate that a mark is registered in that country. Use in the United States of the symbol ® by the holder of a foreign registration may be proper.