The Swier Law Firm Corporate and Business Law FAQs
Have questions? We have answers! Our South Dakota attorneys answer the questions they hear most often from clients just like you.
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Protecting Your Ideas - What is domain name registration?
In addition to filing for trademark registration, you should consider registering domain names that incorporate your important trademarks. Early domain name registration may prevent another party from registering the domain names and stopping you from using those domain names in your business.
In some instances, companies will also register domain names that are similar to their trademarks as a defensive measure to discourage cybersquatters and typosquatters who often seek payment for the transfer of domain name registrations. While it is possible to file a complaint to have a domain name transferred to the rightful trademark owner, it is typically less expensive to register domain names early in order to “lock up” the rights.
Protecting Your Ideas - Can you reserve a trademark for the future?
Yes. If you are in the planning or development stage of creating a product, you may have an idea for the product’s name that you'd like to trademark, but you don't plan to immediately offer the product to the public. The USPTO allows you to file an "intent to use" (ITU) trademark registration. Filing for an ITU doesn't establish a trademark, it reserves the trademark for future use.
Once you've reserved your ITU trademark, you must use the mark within six months to three years of filing the ITU. Once you actually use the mark in commerce, the “use” of the trademark back-dates to your ITU filing. Under most circumstances, it pays to file for an ITU if you are sure you want to use a certain trademark.
Protecting Your Ideas - How can you maintain your trademark?
To maintain your trademark, you must file your first maintenance document between the 5th and 6th year after the registration date. Your registration certificate contains important information on maintaining your federal registration. If the documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated, making the filing of a brand new application to begin the overall process again necessary.
Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents with the required fees at the appropriate times.
Protecting Your Ideas - Can you lose your rights in a trademark?
Yes. The most common way to lose rights in a mark is to stop using it with no intention to use it again. This is called “abandonment.” However, there are also ways in which trademark rights may be unintentionally lost.
Protecting Your Ideas - How can you monitor your trademark?
Monitoring your trademark sounds simple, but you would be surprised how many trademarks are just sitting there with no one paying attention to them. Once your trademark registration is approved, you can start using the registered trademark symbol, ®. But your efforts to protect your trademark shouldn't end there. Throughout the life of the registration, you must police and enforce your rights. The USPTO registers trademarks, but it does not enforce them – that's up to you.
One way to protect your trademark is to monitor USPTO filings and oppose any applications to register trademarks that seem similar to yours. Another is to be assertive if you learn that another company is using a name or logo that’s similar to your trademark. Sometimes, a letter to the infringer will stop his actions. However, if that doesn’t work, your federal trademark registration gives you the right to file a lawsuit.
Protecting Your Ideas - What is “genericide”?
A word that initially functions as a trademark can lose its trademark significance and become a generic term if consumers improperly use the mark in a generic sense to identify a particular type of product or service regardless of source. This phenomenon is sometimes called “genericide.”
Former trademarks like “kerosene,” “escalator,” and “aspirin” all met this fate. Consistent and proper use of trademarks and consumer education can help combat genericide. For example, the Xerox Company has successfully protected its XEROX® mark from genericide by investing in special advertising to educate the public about the proper use of the mark.
Protecting Your Ideas - What is a “generic” term and can it function as a trademark?
Generic terms are the weakest types of “marks” (and cannot even qualify as “marks” in the legal sense) and are never registrable or enforceable against third parties. Because generic words are the common, everyday name for goods and services and everyone has the right to use such terms to refer to their goods and services, they are not protectable.
For example, the term “toy store” can never function as a service mark for toy store services. A generic term cannot be registered with the USPTO and cannot be protected.
Protecting Your Ideas - What are the different types of trademarks?
Selecting a trademark may not be easy. It may be tempting to choose a word that seems “catchy” and describes a feature or characteristic of your goods or services. However, as a general rule, terms that are merely descriptive of products and services can be difficult to protect as marks, and the more descriptive your mark is, the more difficult it may be to stop your competitors from using it.
The more distinctive a mark is, and the more well-known the mark becomes, the wider the mark’s scope of protection will be. Trademarks can generally be categorized into one of four categories
i.) Coined Marks
Coined marks (also known as a fanciful mark) are at the top of the mountain in terms of distinctiveness and strength. A coined mark has no meaning at all apart from its association with a product or service – it is a “made-up” word (or design). Examples of coined marks are XEROX® for copiers, EXXON® for petroleum products, and GOOGLE® for Web browser services.
ii.) Arbitrary Marks
Arbitrary marks are second on the scale of distinctiveness and strength. An arbitrary trademark is a word that has an ordinary dictionary meaning, but has no special meaning in relation to the goods or services to which it is applied, other than its source-identifying function. An example of an arbitrary mark is APPLE® for computers and SAMSUNG® for televisions.
iii.) Suggestive Marks
Suggestive marks are not as distinctive as coined or arbitrary marks, but may still be considered strong marks. A suggestive mark hints at some function or property of the product or service, but does not directly describe it. A consumer is required to use a degree of thought or imagination to ascertain the exact nature of the goods. Suggestive marks often comprise words that embody desirable qualities or characteristics associated with a product or service – such as efficiency, speed, accuracy, comfort or elegance. Examples of suggestive marks include MICROSOFT® for computer software, GREYHOUND® for bus services, and AIRBUS® for airplanes.
iv.) Descriptive Marks
Descriptive marks are words or designs that describe the goods and/or services. These marks are among the least distinctive and weakest marks. If the USPTO determines that a mark is “merely descriptive” then it is not registrable or protectable unless it acquires distinctiveness – generally through extensive use in commerce over a five-year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.
Businesses sometimes choose descriptive marks for their goods and services, believing that these marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark. However, this approach can lead to marks that cannot be easily protected and may not be registrable or protectable against later users of identical or similar marks. In many circumstances, adopting a descriptive mark may end up costing more money, either due to higher costs to try to enforce such a mark, or because it may be legally necessary to stop using the descriptive mark and select a new mark. Examples of descriptive marks include COMPUTERLAND® for computer store services and VISION WORLD® for optical store services.
Protecting Your Ideas - What is a trademark or service mark?
Trademarks are often among the most important and valuable assets of a business. A distinctive trademark allows a business to build public goodwill and brand reputation in the goods or services it sells.
- A trademark is any word, phrase, name, symbol, or design (or any combination) that identifies and distinguishes the source of the goods of one party from those of others.
- A service mark is any word, name, symbol or design (or any combination) that identifies and distinguishes the services of one party from those of others.
For example, WHOPPER is a word mark for hamburgers, THE MICHELIN design is a logo for tires, TASTE THE RAINBOW is a slogan for Skittles candy, and the COCA-COLA bottle is a package design mark for soft drinks. VISA and AMERICAN EXPRESS are service marks for credit card services. Even a sound, smell, color, color combination, or a shape can be a trademark under certain circumstances. For instance, the color pink has become a well-known trademark for insulation used in building construction, and the sound of certain chimes representing the notes G-E-C has become a trademark for the NBC television company.
Protecting Your Ideas - What is the Lanham Act?
In 1946, Congress enacted the Lanham Act, which is the federal trademark protection law. The Act was created to protect consumers and competitors from a wide variety of misrepresentations of products and services in commerce. The law holds liable any person who uses false advertisements or deception to sell goods or services. It also provides that any person using a mark that may be confused for another’s mark, is liable for damages to the owner of the original mark. Also, since the Lanham Act is a federal law, a trademark owner may bring an infringement law suit in a federal court.