A trademark (or “mark”) is a word, phrase, symbol, de-sign, picture, or combination of these, that identifies the source of a product or service. COKE® , CHEVROLET® , NIKE® , DON’T LEAVE HOME WITHOUT IT® , HOLIDAY INN® , McDONALD’S® , the Nike “Swoosh” logo®, and the Microsoft “Flying Windows” logo® are all famous trademarks. Even colors (Owens-Corning Fiberglas Technology Inc. registered the color pink as a trademark) and sounds (NBC registered a sequence of three chime-like musical notes—typically used in conjunction with its famous peacock logo—as a trademark) can be used as trademarks. Trademarks are often referred to as brands in the advertising industry. A trademark can be a valuable asset to a business. Properly developed and protected, it can instantly communicate a wealth of information to consumers and symbolize the quality of a product or service.

Trademark laws provide the owner of a trademark with certain rights, the most important of which is the right to exclude other parties from using the same or similar mark for the same or similar products or services.  The right to exclusivity is granted to a trademark owner in two (2) ways: through use of the mark and/or by registration of the mark.  The use of a trademark in connection with the offering or selling of goods or services, bestows trademark rights upon the seller or provider of such goods or service within in the area, which the trademark is used to offer or sell goods or services.  This trademark right created by use of the trademark alone is referred to as common law trademark rights and only extends to the where the trademark is used. 

Conversely, registration of a trademark, garners trademark rights irrespective if the trademark is used in any given area, but will not counter or supersede common law trademark right alright in existence at the time of federal registration.  Trademarks can be registered at the state or federal level.  Registration at the state level protects the use of trademark (but for existing common law rights) in the state in which it is register.  Registration of a trademark is separate and apart of incorporating or organizing of a business entity.  In order to register a trademark with a state, a separate filing needs to be made to the state. 

To establish trademark protection nationally, a trademark application needs to be made and registered with the United Trademark and Patent Office (USPTO). 

 The reason the law gives the trademark owner exclusive rights is to protect the public from confusion or fraud. At best, the public would be confused if two different businesses used the same trademark in connection with the same or similar products or services. At worst, a manufacturer of a low-quality product could use a competitor’s brand name, one with a reputation for high quality, to mislead consumers who, because of the inferior product’s association with the reputable trademark, might buy the inferior product thinking they were buying the better product. Without trademark protection, a manufacturer of inferior computers could sell a lot of them simply by slapping COMPAQ® labels on them, even though its computers may be assembled by trained monkeys.

With businesses moving towards a more national presence, selling products on the internet, and creating public awareness via facebook, twitter, LinkedIn, blogs, and website, federal trademark registration is becoming of ever greater importance.  Simply having a website or even selling products or services online does not create trademark rights in the place where consumers are buying products or viewing websites.  Common law trademark rights only attach to where the products or advertising originates.  For example, a customer views a website of a Cincinnati company in Colorado.  The Cincinnati company does not gain trademark rights in Colorado, because a consumer viewed its website in Colorado.  The same holds true for the sale of products.  If a consumer in Colorado buys a product or service from a website and the company selling the product or service is in Ohio, no trademark rights adhere to Colorado, because of the customer’s purchase. 

Once trademark rights are secure, it is important to covet and protect such rights.  A trademark owner’s failure to constantly protect and properly use a trademark can result in the loss of their rights in the mark. The names aspirin, cellophane, escalator, nylon, and zipper were all protected trademarks at one time, but the trademark owners failed to enforce their rights or the proper use of the marks. Over the years these marks became generic – synonymous with the type of product itself rather than the source of the product. Once that happens, the name may be free for anyone to use.

For more information about trademarks contact Gettins’ Law, LLC at 513-400-3895 or by email at mbgettins@gettinslaw.com


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