by Jane D. Tucker
One of the most important assets of a business is
the name of the product or service which it provides. A trademark is a
term, expression or design that identifies and distinguishes a product from
that manufactured or sold by others. A service mark is a term, expression
or design that identifies and distinguishes a service. For example, the
name "Coca-Cola" is the trademark for the cola soft drink made by the
Coca-Cola Company. Similarly, "McDonalds" is a well known
service mark identifying a distinctive restaurant.
A trademark or service mark has value in and of
itself, apart from the value of the product or service which it represents.
The mark "Coca-Cola" is valued in the billions! Although the
value of your trademark and/or service mark may not be on the scale of
"Coca-Cola", you should not underestimate its worth to your
Your rights in a mark arise from your use of the mark.
As between different owners of a mark, the rights in a mark generally attach to
the first to use the mark. The more distinctive the mark, and the longer
you use the mark in connection with your product or service, the stronger will
be your right to claim exclusive use of the mark.
Just as you would protect your other assets from
harm, you should also do what is necessary to ensure protection of your
trademark or service mark from a competitor who may attempt to sell different
goods or services under an identical or confusingly similar name. The
best way to protect your valuable mark is to register the mark with the U.S.
Patent & Trademark Office.
Although it is not necessary to have your mark
registered in order to claim ownership rights in the mark, the owner of a
federal registration has certain advantages in the event it is necessary to sue
another for infringement. The registration is evidence of inherent
distinctiveness or secondary meaning. The party who defends against the claim
of infringement must overcome the owner's presumptively exclusive right to use
its mark by a preponderance of the evidence. After five years of
continuous use subsequent to registration, the mark may be deemed
Once a mark has been registered, there are
certain deadlines in the registration process that must be met in order to
ensure that your registration is maintained. Between the fifth and sixth
year anniversaries of the date of registration, a statement must be filed with
the U. S. Patent and Trademark Office stating that you are still using the
mark. The registration may be renewed by filing an application for
renewal after ten years.
It is important that prior to registration of
your mark you give notice of your rights in the mark by placing a
"TM" (for a trademark) or "SM" (for a service mark)
adjacent to the mark. After the mark has been registered with the U.S.
Patent & Trademark Office, an "R" in a circle should be used as
notice of your rights in the mark and your federal registration.
If you have any questions or need more
information, please contact Jane
These articles are meant to bring awareness to the topic and are not
intended to be used as legal advice. If you have questions about any of the
articles or any other related matters, please see the contact information
located at the end of each individual article.
Jane D. Tucker is an attorney with Vandeventer Black and concentrates her law practice
in intellectual property, information technology, ERISA, employee benefits,
commercial, and business transactions.
Jane's intellectual property and information technology practice involves
trademark and copyright registration, as well as protection, sale and/or
licensing of all forms of intellectual property, including patents and trade
secrets. Jane was recently named as one of Virginia Business' "Legal Elite" in
the area of Intellectual Property.