Areas of Practice > Trademarks

Trademarks, Trade Dress, Copyright

Our goal is to achieve the best possible protection for our clients. Whether your work is best protected by way of a trademark, trade dress, copyright, or design patent --or even all of these -- we shall advise you with your interests in mind and the objectives of your particular business. Lerner Greenberg Stemer LLP can secure your rights in every aspect of trademark and copyright protection, including all phases of federal and state registration, opposition, cancellation, litigation support, and enforcement procedures. Our experts are fully versed in the application process in the United States, in the international filing systems, and in a multitude of countries around the world.

What is a Trademark/Service Mark?

Any word, name, or symbol qualifies for trademark protection if it is used by a person (or that person has a bona fide intention to use the mark) in commerce to identify and distinguish his goods/services from those made by others and to indicate the source, even if the source is unknown. The purpose of the trademark law is to protect consumers from confusion as to the source of the goods and services by allowing producers exclusive rights in a mark reflecting goodwill and quality reputation they have developed.

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By the way, a service mark is also a trademark. Service marks are marks that are used in the context of services. Since many marks are used for goods and for services, the words trademark or mark are generically used for all marks, including service marks.

The trademark owner is the first to use the mark in a given geographic area in connection with particular goods or services. State common law grants ownership by virtue of being the first person to use the trademark. Federal law does not create trademark ownership, nor does federal law preempt state law. The federal Lanham Act, however, provides a federal registration system for trademarks which are used in interstate commerce. In addition, the Lanham Act provides procedural rights and enforcement mechanisms. Any infringement of a trademark must be based on the likelihood of (and actual) consumer confusion.

What is the Difference Between a Trademark and a Copyright?

The primary distinction between a trademark and a copyright is as follows: a copyright is established as soon as the work is fixed (pen to paper, music to tape, photograph on film/card, etc.). There's no need to register. The rights attach immediately. Registration is only required if the copyright owner wishes to enforce his/her rights in court. No rights attach to a trademark simply upon creation. In the context of trademarks, use is the key. A trademark need not be original or creative; trademarks do not fall into the public domain after a predefined period of time; and the exclusiveness of use is limited by geographic area and by the type of product and service. For more, check out the FAQ section at the Trademark Office.

Trademark Application / Registration

Do not use the symbol ® or the designation "registered trademark" until the mark is actually registered. If you do, the registration may be refused or it may be taken away.

The United States Trademark Office accepts applications for trademarks that may be based on any of several different filing bases. The four primary categories are:

(1) Based on Use - Section 1(a):

The mark has been used in commerce which the U.S. Congress may regulate, namely, interstate commerce or importation into the U.S. from abroad. The applicant must state that the mark has been used and indicate the exact dates of such use (i.e., the first time that the mark was used anywhere in the world and the first time the mark was used in, or imported into, the United States. The two dates may be the same). More Info...

(2) Intent to Use - Section 1(b):

The mark has not yet been used in commerce, but the applicant has a bona fide intent to use the mark in such commerce. The mark will be registered by the U.S. Trademark Office only after the mark has been used and the applicant files a corresponding declaration. More Info...

(3) Foreign Priority - Section 44:

An applicant may claim the priority of a foreign trademark application under § 44(d) if the U.S. application is filed within six months of the foreign filing or the priority of a foreign trademark registration under § 44(e). The applicant is required to state that he/she has a bona fide intent to use the mark in U.S. commerce and the mark will be registered by the U.S. Trademark Office only after a certified copy of the foreign registration has been filed. More Info...

(4) Extension - Section 66(a):

The owner of an international registration may file a request for extension of protection of that registration to the United States. The request for extension to the United States may be included in the international application, or in a subsequent designation made after the International Bureau registers the mark. The request for extension will be electronically transmitted to the U.S. Trademark Office, where the request for extension of protection to the United States will be referred to as a "§66(a) application." More Info...

Classes of Marks

1. Generic Terms - cannot be registered.

A mark is generic when it is a term commonly used as the name or description of a certain kind of good. In determining whether or not the term is generic, one of three factors must be fulfilled: First, the word/expression has such an inherent meaning in ordinary language or the public uses it to identify goods of other producers as well. Second, the term is a compound word which, while not previously used, suggests the content of the description. For instance, the word “screenwipe” connotes the use and the constitution of the goods, if used for articles to be used for wiping screens. Third, the primary significance test ascertains the primary meaning of the term to the prospective purchaser of the product.

A generic term cannot be protected and it cannot become a monopoly. This applies as well to phonetic equivalents (phone = fone) and, in general, to foreign language translations (Bier, birra, cerveza, etc. cannot be registered in class 32 for beer).

2. Merely Descriptive - may or may not be registered.

Where a mark specifically describes a characteristic or ingredient of an article, it is considered descriptive. Such a term may become a valid trademark upon acquiring a secondary meaning: the mark has become distinctive of the producer’s goods and/or the primary significance in the mind of the consumer is not the product but the producer. Here, the mark no longer identifies the product but the producer and his goodwill.

The protection afforded by a descriptive mark is not absolute. Other producers may still use the word in its generic form and to denote generic products. This is a concept similar to the copyright fair use defense. However, the competing producer must not use the mark in its non-generic sense (e.g. Cat Chow® for cat food). A descriptive mark can be registered only after the mark has been used virtually exclusively in the context of the goods for an extended period of time.

In some cases, a mark that has been categorized as "merely descriptive" may be recorded on the Supplemental Register. After five years on the Supplemental Register and after the mark has been used "substantially exclusively" for five years, the "merely descriptive" mark is said to have acquired secondary meaning and the mark may be registered on the Principal Register, subject to the filing of a new trademark application.

3. Suggestive Marks - may be registered

A term which suggests an ingredient or characteristic of the product is suggestive. Upon being exposed to the mark, the observer or listener must use imagination and perception to determine the nature of the goods. Suggestive marks are protectible even if they have not acquired secondary meaning (e.g. Terminix® for pest control).

4. Arbitrary Marks - the best mark of all

The best mark is an arbitrary mark. A word, for instance, which is not defined in a dictionary as having a meaning in a modern language is considered arbitrary. An onomatopoeic expression (a word which phonetically imitates a natural sound) may be considered arbitrary, even if it suggests the product. An arbitrary mark allows the highest level of protection. The word either has no meaning in the language at all (it is “coined”, e.g. Kodak®, Exxon®) or it has no meaning in connection with the goods (e.g. Crest® Toothpaste).

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