AUGUST 5, 2010 | PERSPECTIVE
A Primer on the Selection And Clearance of Trademarks
By William E. Maguire
Surfboards, swim fins, wetsuits, t-shirts, swimsuits, sunglasses, sunscreen, bottled water, sandals, umbrellas, towels, volleyballs, ice chests - sounds like another summer day at the beach! To the savvy, business entrepreneur, however, these beach accessories are the breeding ground for commercial exploitation. Not far behind in this consumer petrie dish of sand and capitalism is the need to select a trademark by which the item exploited will be known, e.g., Hobie® surfboards, O'Neill® wetsuits, Oakley® sunglasses, Tommy Bahama® beach towels, hats, shirts and shorts, and Coppertone® sunscreen and tanning lotions. A trademark is defined as any word, symbol, slogan, or device (such as a design), or a combination of them, used by a manufacturer or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. Coppertone® and Speedo® are excellent examples of 'word' marks. "Tan Don't Burn" is an example of a 'slogan' mark. A logo or design such as the famous Coppertone girl and the dog is an example of a 'design' mark. An example of a service mark is ESPN® for the "entertainment services, reporting and sports programming services rendered through the medium of television." Such a service mark can also be exploited and serve as a trademark (i.e., for clothes (shirts, hats, sweaters; prerecorded dvd's and cd's; beach bags, beach towels, etc.). In the U.S., trademark rights are acquired through use (e.g., by selling or transporting your product in commerce with the mark attached or on a label). In addition, under certain circumstances "color" can be a trademark. Examples outside the surf/beach industry are the color "pink" for fiberglass insulation and "green" for dry cleaning pads.
The selection of a trademark is the first step that a merchant undertakes to create an identity. The clearance of a trademark is the process of determining whether or not the trademark is available for use. Ignoring this vital step can lead to a multitude of problems and expense. A two-step process is suggested: First, conduct an online computer trademark search of the mark. This online search identifies the goods sought to be used or sold as trademarks and categorizes by classification. In the United States, the federal government has adopted the international classification system. Toys, sporting goods, volleyballs swim fins, bodyboards, and surfboards are in Class #28. Swimsuits and beach apparel and clothing are in Class #25. Backpacks, beach bags and gear bags are in Class #18. Posters, magazines, books, trading cards, and other printed matter and publications are in Class #16. DVD's, compact discs, video game software (including downloadable software over a global computer network), surfing and skateboard helmets are in Class #9. Therefore, if you are planning to sell surfboards, apparel and gear bags, then you will want to conduct an online search of Classes # 28, 25 and 18. The online search is often called a "knock-out" search because it is a quick and relatively inexpensive way to determine if the mark is taken. These searches are available at www.uspto.gov, or can be performed by commercial search firms and law firms.
If your mark appears free of conflicts after conducting an online search, the next step is the full search, which is obtained from commercial search firms. The full search will scour the federal database of trademarks at the Patent and Trademark Office, state trademark registrations, common law sources such as phone directories, the Internet and Dun & Bradstreet listings, plus Internet domain name registrations. If your mark still appears clear of conflicts after a full search, then you can be fairly certain that you can adopt and start using your mark. These searches are not guarantees of the absence of conflicting marks, but they do allow a merchant to make an informed decision in the clearance of a trademark.
To obtain maximum protection, it is best to register your trademark or service mark. In the U.S., your greatest rights can be obtained with a federal trademark registration. If you are only conducting business within one state, it is possible to register your mark with the appropriate Secretary of State. However, if you intend to do business across state lines or in foreign commerce, then the prudent thing to do is to file for a federal trademark application with the U.S. Patent and Trademark Office located in Alexandria, Va.
An application for registration of a trademark must be filed in the name of the owner of the mark. The on-line application is both recommended and preferred by the U.S. Patent and Trademark Office at www.uspto.gov. In fact, an application filed via mail is more costly than filing on-line. The applicant must submit: an application; a drawing of the mark; and the required filing fee (which is $325 per mark per class at this time for an application filed on-line, or $375 if filed the old fashioned way). The applicant will also incur attorney fees, typically a fixed fee, should an attorney be hired to file the application. After the mark is registered in the U.S., it is important to give notice of this fact by placing the registered trademark symbol, "®," adjacent to the mark. Prior to registration, it is also advisable to use the symbols, "TM" (for trademarks) and "SM" (for service marks).
The chief advantages of a federal registration include: Constructive notice nationwide of the registrant's claim to ownership of the mark. This eliminates the good faith defense of an infringer who claims to have lacked actual knowledge of the registered mark. Registration is also evidence of the validity of the registration; the registrant's ownership of the mark; and the registrant's exclusive right to use the mark in commerce in connection with the goods or services. In addition, registration entitles the registrant to file a lawsuit for infringement of the mark in Federal Court; prevent importation of goods bearing an infringing mark; and use the registration as a basis for registering the same mark in certain foreign countries.
Trademark registrations are valid for 10 years subject to certain use and filing requirements, and are renewable every 10 years, also subject to continued use and renewal filing requirements.
If your product is distributed internationally, then you must, by and large, register your mark in each country where you plan to do business or are doing business. Is this expensive? Yes! On the other hand, the alternative is the potential loss of the ability to sell your product in those countries where a third party has filed a prior application for your mark. Therefore, foreign trademark protection is typically obtained on a country-by-country basis. Unlike the U.S., however, trademark rights in many foreign countries are obtained by registration rather than use. This further necessitates the importance of filing for marks in foreign countries as soon as possible.
One notable alternative to the typical practice of registering trademarks on a country-by-country basis is the European Community Trade Mark Application, which has been available since Jan. 1, 1996. By obtaining a community wide trademark registration, an owner of a U.S. registered trademark, for example, can potentially save both time and money otherwise invested in registering a mark in each separate European country and can thus hopefully attain maximum protection for its trademarks in overseas markets at a minimum of cost.
Whether you are selling products or services, it is very important to be aware of your trademark and/or service mark and their value. In a competitive business environment, the potential for economic loss is tremendous if trademark rights are not acquired, evaluated, protected and maximized.
William E. Maguire is a sole practitioner in Los Angeles and concentrates on trademarks, copyrights and licensing. He can be reached at maguire@artnet.net, or through www.tmesq.com.
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