A Brief Look at Trademarks
| Publication year | 1978 |
| Pages | 167 |
| Citation | Vol. 7 No. 2 Pg. 167 |
1978, February, Pg. 167. A Brief Look at Trademarks
The term "trademark" includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.
The term "service mark" means a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.
Section 45, Trademark
Act of 1946
Trademarks and service marks are valuable assets of the businessman, representing the goodwill of his enterprise and indicating a single source of origin for those products and services they identify. Further, they serve as a focal point of his advertising. However, they are, oftentimes, routinely selected and used without regard to or recognition of favorable or unfavorable legal consequences. Prior use of the same or confusingly similar mark by third parties, acquisition of proprietary rights, proper usage on labeling and promotional material, and claims made by or against others are not fully considered or appreciated. As a result, the right to use the mark may be challenged, limited, or in some instances lost.
Many of the common oversights made in the process of adopting and using a mark can be easily avoided if recognized by the attorney and called to the client's attention during the mark formulation process. At that point, changes can be made without substantial expenses or loss of good will.
At the outset, it should be recognized that valid proprietary rights are only acquired by a lawful use of the mark in connection with the sale of products or services, in intrastate or interstate commerce, on labeling or promotional material. These rights come into existence on the date the labeled product first enters commerce or the service is first performed under the mark. In the event of conflict between rival claimants, this date is critical since the first user possesses superior rights and may be entitled to an injunction as well as damages in an infringement suit.
Next, unlike rights in a patent or copyright, the client should be aware of the fact that those in a mark exist independent of government grant or recognition and may last indefinitely as long as the mark is continuously and properly used to identify the product or service.
Finally, the client should recognize that registration of a mark with the Secretary of State, United States Patent and Trademark Office, and/or other governmental agency does not create rights in the mark. Ownership depends upon use. Registration is merely agency recognition of claimed rights conferring certain legal benefits on the owner of the mark and, for this reason, it is desirable.
Prior to use of the mark and even making commitments for labeling, advertising material and the like featuring the mark, a search is recommended to determine if the proposed mark or one similar thereto has been used anywhere in the United States by another. A separate search should be requested for each mark under consideration since the search report will refer only to those marks similar to that for which an order has been placed.
As noted earlier, where confusingly similar marks are used by unrelated parties, the prior user possesses superior rights. Accordingly, the search report is a very valuable tool to ascertain potential conflicts in this regard. Failure to search may be a costly mistake if a conflict does arise that could have been avoided by reference to information disclosed by a search. Loss of good will, legal expenses, and costs of changeover to another mark represent some of the consequences.
Generally, a reasonably complete search involves a...
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