Protecting Your Trademark and/or Service Mark Rights

Protecting Your Trademark and/or Service Mark Rights

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 business. 

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 "incontestable."

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 Tucker.

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.