Trademarks and Service Marks for Small Businesses
Trademarks and service marks are an important consideration for anyone setting up a new business. Here are a few of the things you might want to know if you’re just getting started or are not yet well known.
Part I – Terms and Concepts
This first part will deal with some basic terms and concepts:
First, a “mark,” generally speaking, is a word, several words, or an image that is used to distinguish the source of goods or services from the goods of services of another source. For example, the respective marks “COCA COLA” and “PEPSI COLA” distinguish these two famous sources of soda. Marks can be ordinary text (such as “COCA COLA”), text with a design element (the Coca Cola logo: ),
an image with no words (the Pepsi logo:),
or combinations of these. Now, the foregoing examples are most (though not exclusively) associated with goods – namely, sodas – so let’s also give you an example of a famous mark associated with services:
“Mark” is the most precise term to use when discussing trademarks and service marks in general.
As you may have already surmised, the term “trademark” is used to refer to a mark associated with the source of goods, while a “service mark” is used to refer to a mark associated with the source of services. However, the term “trademark” can occasionally be a source of considerable confusion because it’s often used by both lawyers and laypersons alike in a more generic sense, much like the term “mark.” In this discussion, we’ll try to use all three terms in their more precise senses, but be aware that as you read more about this subject that you’re likely to run across the term “trademark” used in a more general sense.
Common Law vs. Registered Marks
Next, we need to distinguish between a “common law” mark, a federal mark registration, and a state mark registration. A “common law” mark refers to the automatic ownership one acquires in a name or logo associated with a source of goods or services. For example, if you own an ice cream store called “Happy’s” that makes and sells its own ice cream, and your ice cream was identified by the mark “Happy’s,” then to the extent someone else doesn’t already make and sell ice cream under that name you, broadly speaking, own the rights to the mark “Happy’s” in connection with the manufacture and sale of ice cream. Common law marks are extremely important, though the rights associated with them are limited in ways we’ll discuss later on.
A federal mark registration is what people most often refer to, imprecisely, as a “trademark.” A federal registration is the end product of an application for federal registration of a mark. A federal registration means that, not only do you own the mark, but you have certain rights in and to that mark afforded to you by federal law, namely the Lanham Act of 1946. We’ll talk in more detail about the Lanham Act later, but for now just be aware that a federal registration can give you significant rights to you mark everywhere in the United States.
State mark registrations vary somewhat by state, but you can think of it as somewhat similar to a federal registration, except that the rights and protections to the mark are only within that particular state. In these days of internet sales, state registrations are becoming less and less important, but there are still situations in which applying for a state mark registration may be a good idea.
Next time, we’ll talk more about the various rights that can be secured by federal mark registration, and we’ll also discuss some of the things to consider when creating a good mark.
Strength of your Mark
What’s registrable (“trademarkable”)?
Fanciful, arbitrary, suggestive, merely descriptive, generic
Plain text vs stylize text vs logo
Rights to marks under common law, state law, and federal law.
Classes and descriptions
In use and intent to use
Specimens and Allegations of Use
What to bring to your trademark attorney
Be prepared to discuss the goods you make and/or the services you provide in detail; it’s critical your attorney fully understand what you do
Bring a specimen if already in use
Bring a high res drawing of the mark, if a logo or stylized text