Columns > Published on August 29th, 2014

What Are Trademarks and Do I Need Them?

Some good friends of mine run a popular blog.  It’s a hobby for them, but a successful hobby that they’ve worked hard at over the years. They've managed to gain an engaged and loyal following. They have well-known contributors from the industry, and have built up a credible reputation in their niche.

So how do you think they felt when a registered company with a national brand came along and nicked their name?

In fairness, the company probably didn’t take their name. They probably weren’t even aware of my friends or their website.

This is where trademarks come into play. Let’s have a look at what they are and how they work in the American trademarks system.

1. What is a trademark?

The United States Trademark and Patent Office defines a trademark as a “word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others”.

America also uses a category called service marks – very similar to a trademark, but they distinguish the source of services rather than of goods. The term trademark is used to cover both trademarks and service marks.

The commercial rationale behind trademarks is to assist users and consumers in distinguishing one company and their services and/or products from another company’s services and/or products.

2. Do you have to register a trademark?

No. But if someone is going to use the same word, phrase, symbol or design as you, you want this protection. 

What registration does is give you a presumption of ownership of that word, phrase, symbol or design in the case of such an argument. Without registration, you have a far more complicated argument, and without legal resources and lots of money, a huge headache.

Registration also gives you the exclusive right to use your trademark in relation to the goods or services it has been registered in connection with.

So you can see the benefits of registering trademarks. It can be a pretty powerful trump card in any argument on ownership. And trying to stop someone using your mark when you haven’t registered it can be expensive and difficult.  Further, registration in America means that you’re entitled to damages if your claim of ownership goes through the courts.

3. How do trademarks work with copyright and patents?

Copyright and patents fall under the same intellectual property umbrella as trademarks, but are different beasts.

I’ve explained the basics of copyright concepts over HERE.

Copyright covers the tangible or material expression of an idea, but does not cover titles, names, slogans, symbols, designs etc. This is where trademarks come in.

Patents, on the other hand, are property rights attached to inventions for a limited time period.

4. How do you register a trademark?

The process for registering your trademark is explained very clearly online at the USTPO. But summarised, the process is:

  1. Decide whether protection is appropriate – is it copyright, trademark or patent registration? Think about whether it’s worth hiring an intellectual property lawyer. Trademark attorneys search and register trademarks as their bread and butter, and can take a lot of the confusion out of the process.
  2. If you go through the process yourself, identify whether your trademark or service mark is a character, design, or sound mark.
  3. Clearly identify the exact goods and services to which it will apply.
  4. Search the USPTO database to check whether it’s already registered or not.
  5. Identify the proper "basis" for filing a trademark application – it has to either be already in use, or intended for use.
  6. File the application online through the Trademark Electronic Application System.  Fees range between $275 and $375 for your usual sorts of new applications. And the fees are non-refundable even if you don’t receive registration.

5. What do I do if someone uses my trademark?

The USTPO doesn’t “police” the use of trademarks (its own words, not mine) and explicitly states that it is up to a trademark owner to bring legal action against someone using their trademark.

So whether you register your trademark or not, it’s up to you (or your lawyer, if you choose to engage one) to issue a letter to a potential competitor using the mark asking them to cease and desist from doing so.

Disclaimer: This column does not create a client-attorney relationship and is not intended as legal advice. Should you need any legal advice, speak to an attorney who is skilled in the area and jurisdiction you require. 

About the author

In a previous life, Jessica worked for 12 years in the legal industry, with her last purely legal role being the corporate counsel for a property management company in Australia. Since then, she’s been the editor for an online literary journal and currently manages a music/tech start-up. She also freelancers as a contract lawyer and content producer, and writes regular columns for Litreactor and Gypsy Girl.

Jessica’s fiction and poetry has appeared in or is upcoming in Andromeda Spaceways Inflight Magazine (Aus), Beware the Dark (UK), Kaleidotrope, Plasma Frequency Magazine, and Pantheon Magazine.

She loves swimming, and like Peter Singer, considers herself a flexible vegan and focuses on the welfarist approach to animal rights.

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