Trademarks and Servicemarks

: How to Make Your Business Legal

Information about Trademarks ™  ® and Servicemarks that may be applicable to your gift basket business.

What is a Trademark and a Servicemark?

A trademark is a word, name, symbol or device, or a combination of these, which is used with goods to distinguish them from the goods sold by others. For example, “Snickers” for a candy bar. Servicemarks are like trademarks, except they identify services, such as “Burger King” for restaurant services.

Trademark Rights
Trademark rights are obtained through use of a trademark on or in connection with the goods or, by displaying the servicemark in the sale or advertising of services. Because the rules for both kinds of marks are basically the same, we can refer to both trademarks and servicemarks as simply “trademarks”. Ownership in a trademark exists as soon as you use it properly, subject to the rights of any other person using the same or a confusingly similar trademark.

Trademark rights last forever, as long as the mark is not abandoned and does not become generic.

Selecting a Trademark
Selecting the best trademark for your business is important. These symbols can be strong or weak. The strongest trademarks usually have the following characteristics:

• They are unique. A similar trademark should not be used by anyone in another line of business.
• They are often arbitrary or fanciful. That is, they often have no logical connection to the goods. For example, “Mustang” seems to have nothing to do with cars.
• They are often suggestive. If the trademark conjures up a good image or impression, it is helpful.
• They are usually not descriptive. Terms like “car”, “TV Repair” or “Hi Fi” are not good to use with those products and services, because they can’t be used exclusively.
• They are rarely surnames or geographic names. While some well known trademarks use surnames, it’s rare. It takes a great deal of time and marketing dollars before consumers first think of your name as a trademark (or icon), rather than the identifying owner of the business.

After selecting a trademark, it’s a good idea to search for any prior conflicting uses. Here you have several options. You can use the US Gov website to perform a free trademark search using TESS. Or you can hire a trademark lawyer or search firm, both will charge you a fee to search public records and determine if others are using a similar mark. While a search is not absolutely necessary, it’s almost always a good investment to help avoid problems.

Registering a Trademark
If you haven’t yet used a trademark, but you intend to use it, it’s possible to obtain the trademark rights by filing a trademark application with the U.S. Patent and Trademark Office (USPTO). Although your registration will not be issued until you actually use the mark and file proof of use with the USPTO, the application establishes a priority date. This protects your rights in the trademarks against others that later use it.

A trademark can be registered with the USPTO and most of the 50 states. Because trademark rights exist automatically as a matter of law, it’s not absolutely necessary to register a trademark. However, there are many advantages to registration. If you register your trademark with the USPTO, it will help to make sure you can use it as you expand your business throughout the U.S. Registration with a state office provides benefits for use of the trademark only in that state. It also makes it more difficult for someone else to later use or register a similar trademark.

Protecting a Trademark
Once you’ve established a trademark, it’s important to take steps to protect it. First, if your trademark is registered with the USPTO, be sure to use the ‘ ® ‘ sign with your mark. Second, if anyone infringes on your mark, immediately take action to stop the infringement. This can sometimes be done with a “cease and desist” letter. At other times, a lawsuit is necessary.

Make sure your employees, customers and associates report any potentially infringing use to you. Many trademark owners employ a professional service to keep track of activity in the USPTO to identify potentially confusing marks that have been published. Infringement can exist when there is likelihood of confusion in the marketplace between the goods with your trademark and the goods of the infringer.

Protect your mark against dilution. Dilution can occur when others who are not your direct competitors use your mark. The value of the mark is watered down, or diluted, affecting its strength and selling power. For example, use of the mark “Cadillac” with wristwatches could conceivably lead to dilution of that trademark. For dilution to occur, your trademark does not have to be famous, it only has to be distinctive.

Don’t let your mark become generic. A trademark can become generic when it becomes recognized by the public as the common name for a product, rather than an indication of the source of the product. For example, Shredded Wheat, Thermos and Super Glue are all former trademarks. Notify anyone using your mark in a generic sense to cease and desist.

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