Trademarks
and Service Marks
Russell Egan, Esq.
Russell Egan is an Houston, Texas intellectual property attorney with extensive experience interacting with inventors to obtain patent protection for their properties. This includes novelty, infringement and validity searches and opinions, application preparation and prosecution, appeals and interferences, and other needs as they arise. He has obtained over 500 domestic and foreign patents for individuals and corporations covering a wide range of technologies and subject matter. His clients range from Fortune 500 corporations to small, single member entities. His web site is located at www.lawyerscenter.com/patentlaw.
What is a Trademark?
A trademark is any word name symbol, or device that identifies goods of one company and distinguishes them from goods of others. Trademarks may also consist of the shape of the goods or packages, slogans, colors, or any combination of these.
A trademark is a proper adjective that modifies a generic name of a product. As a proper adjective it should always be capitalized. For example, "Budweiser" is a trademark while "beer" is a generic name. A trademark should never be used as a noun or verb. The Xerox Corporation fights to preserve its trademark by discouraging the use of the name of their company's trademark products as nouns or verbs. It is inappropriate to say "make a Xerox", or "Xerox this document", and the company uses advertising and actively pursues those who misuse its trademarks to prevent their mark from becoming an unprotectable generic name for photocopiers and related supplies. Some examples of words which were once trademarks but became generic names through usage as nouns are "aspirin", "shredded wheat", and "escalator".
A trademark is not a trademark until it has been used to identify goods. Using the mark in advertising, on business cards, or the like, is not enough. The mark must be affixed to the goods or the packaging in order to be entitled to the legal status of a trademark.
How do you choose a trademark?
A good trademark is one that the public will easily remember and associate with goods of a given company, as opposed to any goods of the same generic kind. A trademark should be readily distinguishable from the generic or common name of the goods. Cute variations of generic names usually do not make good trademarks. Trademarks should also be different from the marks of competitors and should not sound the same or look the same. The strongest trademarks are those which are coined and have no dictionary meaning, such as Kodak, Exxon, or Xerox.
When a tentative trademark has been selected, a search should be done to find out whether anyone else is using a similar trademark for similar goods. The search should cover federal registrations, state registrations, and unregistered uses. Often the process of selecting tentative trademarks and searching for conflicting uses must be repeated several times before a suitable trademark is found.
What is a trade name?
A "trade name" is the name of a business. It may or may not be the same as a trademark that identifies a product of that business. For example, "Cadillac" is a trademark for automobiles made by a company whose trade name is "General Motors Corporation"; "Ford" is a trademark for automobiles made by a company whose trade name is "Ford Motor Company". Corporate names are the most widely used form of trade names. A trade name may or may not be the legal name under which a business is registered in its state of incorporation.
Trademark Watching Service
A trademark watching service can warn your company of possible infringement of one of its trademarks and enable your company to prevent registration of conflicting trademarks in the United States and more than 200 other countries. In most countries possessing a trademark registration law, parties seeking to register a trademark must first file a trademark application. Before an application can become a registration, it must be published for opposition in an official publication. This allows members of the public, for a specific time period, to oppose the registration of the trademark. In the United States this publication is called "The Official Gazette" and is published weekly. Trademark applications published in "The Official Gazette" are subject to public opposition for a period of 30 days.
The trademark watching service will search "The Official Gazette" and any foreign publications desired that present trademark applications for public opposition to identify any potential conflicts with your company's trademark. The trademark watching service will provide your company's trademark counsel with a "watch notice" when a potentially conflicting trademark application is published. A "watch notice" identifies the application and trademark sought to be registered and provides the name and address of the application's owner together with other information. If a watch notice is received, you may choose to oppose the trademark's registration by filing a trademark opposition within the prescribed time limit in the trademark office of the application's point of origin. You may also wish to investigate whether the mark is actually being used in a manner which is infringement of your rights.
What is a service mark?
A service mark is any word, symbol, phrase, or device which identifies services rendered by a company and distinguishes them from services rendered by others. For example, "Fly the Friendly Skies" is a service mark for air transportation provided by United Air Lines.
A service mark must be used in connection with the rendering of a service in order to be entitled to the legal status of a service mark. However, one cannot very well affix a service mark to a service, and hence use of the mark in advertising, on business cards or the like can sometimes be sufficient to entitle a service mark to legal protection.
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