Trademarks

A trademark is used to indicate a source of goods. A trademark can include words, names, symbols, or any combination to identify and distinguish goods of one manufacturer or seller from another. In some cases, trademarks can be specific colors, sounds, and smells. Examples of well-known trademarks include the brand name "Coca Cola, " the Nike "Swoosh" symbol, and the "NBC" three note chime sound.

A servicemark is used to indicate the source of services. A servicemark is identical to a trademark, differing only that a trademark is used to identify physical goods, and a servicemark is for services. For simplicity, this website will refer to trademarks and servicemarks collectively as "trademarks."

There are several different types of trademarks, including common law trademarks, state registrations, and federal registrations.

A common law trademark can be obtained by merely using a term as a trademark in commerce, and identifying it as a trademark. A trademark is identified by the TM symbol when it is associated with goods used in commerce. In contrast, when the mark is used to identify services, it is actually called a service mark and a SM symbol is used as an identifier. There is no application process to obtain a common law trademark, and accordingly it offers the least amount of protection. Anyone can start placing a small TM by their name, slogan, or graphic to obtain common law trademark rights on their goods. If you are using a mark to identify a service provided by your business (financial, legal, cleaning) you should place a small SM by the name, slogan or graphic instead of a TM. You do need to use the mark publicly, and you should keep accurate records of the date you first used the mark. Common law trademark rights may be a defense to trademark infringement.

Many states allow for trademark registration, which provides more protection and legal remedies for trademark infringement. The process for application, and the amount of protection offered varies by state. A state trademark registration will only protect that trademark within the state.

For goods and services used in interstate commerce, it is recommended to protect a trademark with a federal registration, which can be obtained by filing a federal trademark application. Interstate commerce is sending goods across state lines, providing services across state lines, or providing services that affect interstate commerce, such as a restaurant or a gas station. Sending a good through the mail, or advertising on the Internet, is also considered interstate commerce.

(For a free trademark consultation please call our intellectual property attorney Marc Baumgartner at 503-546-3452 (Portland) or toll free at 877-734-8669)

Commonly referred to as a registered trademark, it can be identified by the "circle R" ¨ symbol. There are many benefits of having a federal trademark on the Principal Register:

1. Identifying a trademark owner's claim throughout the United States.
2. Evidence of ownership of the trademark.
3. Jurisdiction of United States federal courts may be used to protect the trademark.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with United States Customs Service to prevent importation of infringing foreign goods.
6. The mark becomes "incontestable" after it has been registered for 5 years.
7. A legal presumption that the registered mark is valid.

In contrast, marks that are merely descriptive (without secondary meaning) can only be registered on the Supplemental Register. The Supplemental Register provides fewer benefits than the Principal Register.

More specifically, the Supplemental Register allows the owner to:

1. Sue in federal court for trademark infringement
2. Right to use the ® symbol

After placement on the Supplemental Register for 5 continuous years, it is easier to claim a mark has secondary meaning and can be placed on the Principal Register. In addition, potential users of a mark will find the mark on the Supplemental Register if they conduct a trademark search. This discovery will most likely influence the searcher to not use your mark.

If you would like to protect your company name, your product name, or your company logo, it is recommended to file for a federally registered trademark.