A trademark is any word, slogan, or symbol which is used in trade with goods and services to indicate their source of origin and to distinguish them from the goods and services of others. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from offering the same goods and services under a non-confusing mark.
In the United States, trademark rights are created when use of a trademark begins. However, these rights are often limited. Greater rights are available by registering the trademark with the state or federal government. Trademarks used in interstate or foreign commerce may be registered in the U.S. Patent and Trademark Office (“PTO”).
A trademark application can be submitted to the PTO based upon actual use in commerce or a bona fide intent to use the mark in commerce. It is important to prepare the application with the assistance of a law firm experienced in trademark matters. Among other things, many aspects of a trademark application cannot be changed after filing, such that the value of any resulting registration may be irretrievably set by the original application papers. Moreover, once the application is on file, a PTO Examining Attorney will be assigned to scrutinize the application in light of the statutory guidelines for registerability. Throughout the application process, there is a substantial amount of interaction with the PTO Examining Attorney in accordance with some rather convoluted procedural rules, which may involve complex legal issues and concessions that can dramatically affect the statutory trademark rights involved. Indeed, it is possible to receive an official trademark registration that has little or no value in terms of practical trademark protection, such that a trademark attorney should handle the entirety of the process to seek the broadest rights available.
A federal trademark registration carries several benefits and protections under the law. Most importantly, a federal registration constitutes prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on the goods and services specified in the registration certificate. Also important is the fact that a federal registration constitutes constructive notice of the registrant’s claim of ownership. The owner of a federal registration may file an infringement lawsuit in federal court and seek injunctive relief, triple damages and attorneys fees, as well as other remedies. Additionally, a registrant has the right to request U.S. Customs Officials to seize imported goods bearing an infringing trademark.
Trademarks may also be registered in individual States, which may yield additional benefits even though limited to the particular State. For example, applications in Florida are examiner within a matter of weeks and a Florida registration may be a powerful tool in enforcement litigation because attorney fees are recoverable under a more liberal standard.
International trademark protection is also available by registering a trademark in individual countries or multi-nationally through various treaties and conventions.