| Trademark, any symbol, such as a word, number,
picture, or design, used by manufacturers or merchants to identify their own goods and
distinguish them from goods made or sold by others. Thus, a trademark identifies the
source of a product and fixes responsibility for its quality. If customers like the goods,
the trademark enables them to know what to purchase in the future. If they dislike the
product, they will avoid goods with that trademark. The
name of a type of product cannot be a trademark, because every maker of that product is
free to use its name. Sony, for example, is a well-known trademark for televisions,
radios, and audio equipment, but no one can have trademark rights to the word television
or radio. On several occasions, however, words intended by manufacturers to be used
as trademarks for new products were instead used by customers to name the products. Such
words then lost their legal status as trademarks. Examples include aspirin, cellophane,
and escalator.
History
Makers of goods throughout the ages have put their names on
things they produced. Some producers devised symbols or pictures to identify and
distinguish their products. Items as diverse as medieval swords and ancient Chinese
pottery have been imprinted with identifying symbols to enable potential purchasers to
trace the origin and determine the quality of the objects. Before the 20th century,
trademarks were usually symbols or pictures rather than words, since most people could not
read.
As trade increased in the 19th century, legal rights of
trademark owners were recognized, and laws prevented other sellers from using a similar
mark that could confuse customers as to the source of products. In 1883 a group of nations
created the Paris Convention, an international treaty organization that required member
countries to recognize trademark rights of foreign producers. The Paris Convention has
been revised several times, and most nations are now members. The U.S. Congress first
passed a law in 1870 permitting the federal registration of trademarks. The current
federal trademark law in the United States, the Lanham Act, was enacted in 1946.
U.S. Trademark Law
Under the common law in each state, anyone who uses a
trademark acquires the legal right to prevent others from subsequently using a similar
mark. Many states register trademarks to maintain a public record and allow others to
search the record before choosing and using a new trademark. In the federal Lanham Act,
Congress has provided a nationwide register of marks for trademark owners who participate
in interstate or foreign commerce. Although a trademark owner can rely on state common-law
rights by merely using its mark, a federal registration provides valuable extra
protection. For this reason, many trademark owners federally register their marks.
In the U.S., trademark may not be registered until it has
actually been used in interstate commerce, although someone may apply to register a mark
based on an intent to use the mark in the future. Use must occur, however, before a
registration will be granted. In contrast, the laws in many nations allow a mark to be
registered before actual use, although many countries require use within a certain number
of years after registration.
Trademarks are federally registered in the U.S. Patent and
Trademark Office of the Department of Commerce. When a trademark owner applies for
registration, the office will examine the application to see if the mark meets the
conditions of federal law. One important condition is that the trademark is not
confusingly similar to a mark previously registered or used in the United States. Under a
1996 revision to the law, the owners of famous trademarks may seek to prevent use of
similar marks, even if used by unrelated products. On approval of the application, the
trademark is published in the official gazette to enable any objections to be heard in an
opposition proceeding. If a registration is granted, it lasts for ten years and may be
renewed at ten-year intervals for as long as the trademark is still in use. Once a federal
registration has been obtained, the owner may give notice by using the symbol ® next to
the trademark.
Anyone who uses a mark so similar to a registered trademark
that it is likely to cause customer confusion is an infringer and can be sued in a
state or federal court. In deciding whether there is infringement, the court compares the
conflicting trademarks as to similarity in sound, appearance, and meaning, and compares
the similarity of the goods and services. Other relevant factors include whether the
competing parties' goods are sold to similar customers, through similar channels of trade,
and the fame of the marks. Unlike patent or copyright infringement, trademark infringement
is defined solely by the likely confusion of customers. The usual remedy after a court
trial finding trademark infringement is an injunction prohibiting the infringer from using
its mark.
A trademark is often a valuable property of a seller or
manufacturer, because it is the symbol of the company's goodwill and of its products and
services. Thus, a trademark can be sold or assigned when a company and its assets are
sold. It can also be licensed to others to use as long as quality control provisions are
in effect. Most fast-food outlets, such as Kentucky Fried Chicken, or other franchised
businesses are licensed to use the trademark of the parent company.
When can I use the trademark symbols TM, SM
and ®?
Any time you claim rights in a mark, you may use the "TM" (trademark) or
"SM" (service mark) designation to alert the public to your claim,
regardless of whether you have filed an application with the USPTO.
However, you may use the federal registration symbol "®" only after the
USPTO actually registers a mark, and not while an application is
pending. Also, you may use the registration symbol with the mark only on
or in connection with the goods and/or services listed in the federal
trademark registration.
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