WHAT
IS A TRADEMARK OR SERVICE MARK ?
Trademarks in general are
the core asset of a company. The trademark or service
mark does not gain this position just by sitting
passively on a trademark register. Indeed, it is not the
registered trademark which is the company asset or the
number of trademark registrations, but the brand. The
brand, however, does not come for free. It is not built
overnight. A successful brand is the result of huge
investments often over a long period of time. A strong
trademark is the result and the expression of excellent
quality of a particular product or service as well as
successful marketing and a healthy corporate culture
which requires high levels of investment.
A trademark is a word,
symbol, design, number or device which is used in trade
with goods to indicate the source of the goods and to
distinguish them from the goods of others. A service mark
is the same as a trademark except that it identifies and
distinguishes the source of a service rather than a
product. Without the ability to distinguish the value and
quality of one’s goods or services from
another’s goods or services, it would be impossible
to obtain a competitive edge in today’s fast paced
market.
Trademark rights may be
used to prevent others from using a confusingly similar
mark, but not to prevent others from making the same
goods or from selling the same goods or services under a
different mark. Trademarks or service marks, which are
used in interstate or foreign commerce, may be registered
with the Patent and Trademark Office.
Although registering your
mark before a respective state entity or the federal
government is highly beneficial to the trademark or
service mark owner, one can establish rights in a mark
based on legitimate use of the mark without a
registration under state or common law rights. Simply
offering a product or service for sale under a particular
mark is enough to establish trademark or service mark
rights. However, owning a federal trademark registration
on the Principal Register provides several advantages
such as:
- constructive notice
to the public of the registrant's claim of ownership
of the mark
- a legal presumption
of the registrant's ownership of the mark and the
registrant's exclusive right to use the mark
nationwide on or in connection with the goods and/or
services listed in the registration
- the ability to bring
an action concerning the mark in federal
court
- the use of the U.S
registration as a basis to obtain registration in
foreign countries
- the ability to file
the U.S. registration with the U.S. Customs Service to
prevent importation of infringing foreign
goods.
Trademark Infringement
The elements for a successful trademark infringement
claim have been well established under both federal and
state case law. In brief, a plaintiff in a trademark case
has the burden of proving that the defendant's use of a
mark has created a likelihood-of-confusion about the
origin or association of the defendant's goods or
services with the plaintiff’s good or services. To
do this, the plaintiff should first show that it has
developed a protectable trademark right in a trademark,
i.e., continuous use of the mark in commerce. The
plaintiff then must show that the defendant is using a
confusingly similar mark in such a way that it creates a
likelihood of confusion, mistake and/or deception with
the consuming public.
The most common form of
relief granted to a successful plaintiff in a trademark
infringement lawsuit is an injunction against further
infringement. If the infringed mark was federally
registered, attorney’s fees would also be available
to a successful plaintiff. Monetary damages are also
available under the Lanham Act in the form of lost
profits by the plaintiff or gained profits by the
defendant; however, in practice are rarely awarded in
trademark lawsuits.
