Just how important are trademarks? You don’t have to journey too far for the answer. Trademarks are easily one of a company’s most valuable assets. Just look at names like CocaCola® and McDonald's®. Trademarks often serve as the basis for our buying choices. They represent the level of quality a customer can expect to receive and the overall experience of dealing with a particular company or product. When you pull into the building with the golden arches, whether you’re in New York or Tokyo, you know what to expect.

Trademarks fall into the intellectual property category. They are just as viable as a car or a computer, but you can’t touch them. As an intellectual property, trademarks reside in the mind as an idea, expressed through a name, symbol or logo, word or group of words, colors, sounds or a combination of elements.

When our distant cave dwelling relatives began to make pottery, they often marked it with symbols. As civilization marched on, we began to mark cattle to identify ownership. Today, trademarks are used to identify goods and services coming from a particular company and are used to distinguish products from competitors. They serve to establish goodwill with the customer. In effect, trademarks equal reputation.

Trademarks are used for products and servicemarks are used to denote, you guessed it, services. At times there may not be clear distinction between goods and services and the term, trademark, is used to encompass both types of marks.

There is a difference between trademarks and trade names. Trademarks are used with specific goods or services and a trade names identifies a company or business.

There is no formal filing required to use a ™. A ®, however, can only be used if the mark is federally registered. With use, an unregistered trademark carries certain rights (common laws rights), but the level of protection depends on the jurisdiction involved and they may only cover the geographic area in which the trademark is being used. If contested, the owner that first used the mark will typically prevail and the other owner will be prevented from expanding into overlapping territory. With federal registration, the primary benefit is that it establishes nationwide protection to registered marks regardless of the areas in which the mark is being used. It also allows the owner to display ®, safeguards future opportunities for nationwide expansion, provides access to federal courts, allows for the possibility of greater recovery of damages for infringement, acts as a deterrent and gives the owner the ability to stop importation of goods that utilize an infringing mark by depositing a copy of the registration certificate with U.S. Customs.

Trademarks do not extend to other countries. Every country has its own trademark laws (there are over 200 countries with individual trademark laws).

This brings us to the process of registration. The process consists of six procedures: Trademark searching; Federal Applications; Processing; U.S. Federal Trademark Applications; Maintenance and Proper Trademark Usage.

The trademark search most often includes coverage of the U.S. Federal and State trademark registers as well as common law sources such as telephone directories, domain names, directories, and Dunn & Bradstreet®, First, a preliminary search is conducted. This type of search consists of an online/CD-ROM search of federal and state trademark registers. It narrows the list of potential trademarks by “knocking out” possible conflicting marks. The preliminary search is usually conducted through trademark counsel with an internal law department or through outside trademark counsel.

Once the list of potential marks has been screened, you conduct a full search of your best remaining possibilities. This search is comprehensive and examines multiple permutations of the mark, checking them against federal, state and common law databases, providing the basis for final clearance. Domain names should also be searched.

As with many things, it appears pretty easy to review the results. There are, however, many elements to be considered in evaluating a full search and an expert in trademark law is usually necessary to avoid misinterpretations. Once the mark is cleared with a full search it is ready to move on to file a U.S. Trademark Application.

There are two types of trademark applications that can be filed - use-based and intent-to-use. Use-base is defined as a mark that is used in commerce in direct association with a product or service. The Use-base application is filed when the mark is in use prior to the time of considering filing an application. It is important to note that the mark must appear on the product and not simply be used on printed materials such as a letterhead or business card and it must be used in interstate commerce.

As the Patent and Trademark Office puts it, “For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce.”

Before actual trademark use takes place, an ITU (Intent-To-Use) application can be filed on the basis of good faith intent to use the mark in commerce. However, eventual use of the mark in commerce is required before a registration can be issued.

So, how much is all this going to cost you? The application fee is [at the time of this writing] $325.00, but that rate is subject to change at any time. ITU applications incur additional fees as they progress toward registration. Preliminary and full searches can vary depending on the trademark counsel used. For example Thomson & Thomson, the Boston based trademark search firm, rate card shows a Standard Design Search for one class at $345.00 and an all class search at $1170.00 (four day turn around). In addition, several rounds of design refinements and options may be required to get a mark to be suitable for registration.

Complexity is the nature of trademarks and this article is in no way exhaustive. Hopefully though, it has given an overview of the process. Trademarks are often a company’s primary asset and, as such, should be given the attention to detail for protection and potential expansion as a company grows.

©2002, Neil Tortorella