The goal of any business, even a non-profit organization, is to make money. So, how do you that? You need customers to buy or use your small business's goods or services. And, one of the best ways to do that is to get the public to know the name of your product, service and company.
Trademarks and service marks (sometimes these two are simply called "marks") help you get the name of your business out there, and they help to make sure that the public knows that it's dealing with you and your goods and not some imitator or sound-alike company. The bottom line is that a trademark or service mark can generate a lot of money for your business.
So, if you're a small business owner, it's a good idea for you know some things about trademarks and service marks, particularly how to create one, what they protect, and what happens if someone else uses your mark- or if you use another business's mark.
What are Trademarks and Service Marks?
A trademark includes any word, name, symbol or device (or any combination of those things) that is used to identify and distinguish the goods that are made or sold by one business from the goods made or sold by another business. Think of a trademark as a "brand name."
A service mark is really the same thing as a trademark, but it's used for services sold by a business, not products. So, a service mark is any word, name, symbol, device or combination that is used to identify and distinguish the services sold or provided by one business from those of another business.
The main idea is simple: a mark lets the public know who it's dealing with. Marks help customers make sure that they're buying your products or services and not someone else's. So, there can be mark for a particular product, like a certain sandwich, and a mark for a business's name, such as a chain of fast-food restaurants.
Having rights to a trademark or service mark gives you the power to prevent or stop another business from using a confusingly similar mark, but you don't have the right to stop others making the same goods or from selling the same goods or services under a clearly different mark. So, for example, a restaurant chain can't stop you from making and selling hamburgers, but it could probably stop you from using its name as your business name and using a similar name for the hamburger offered on your menu.
Creating Rights in a Mark
You can establish your rights to a trademark or a service mark either by:
- Actually using the mark in your business, or
- Filing an application to register a mark with the U.S. Patent & Trademark Office (USPTO). The application must contain information such as the goods and/or services the mark will be used for and a drawing of the mark. There's also a filing fee
You don't have to register your mark with the USPTO, but it's a good idea to do so anyway because it has some advantages, such as:
- Giving the public notice that you own the mark
- Providing you with a legal presumption that you own the mark, that is, if another person claims ownership or tries to use the same mark, a court will presume that you're in fact the owner
- Giving you the exclusive right to use the mark on or in connection with the goods or services you've listed in the application
After it's filed, an "examining attorney" for the USPTO will review your registration application to make sure it's complete, and he or she will search for conflicting marks, that is, marks that are similar and that could cause a likelihood of confusion for the public. If there's a likelihood of confusion, the USPTO will refuse registration.
To find a conflict, the marks don't have to be identical and the goods and/or services don't have to be the same. If the goods/services are related and the marks are similar, there can be a conflict. For example, if you want to trademark a name for a kid's computer program, and there's a similar registered mark for a hamburger, the USPTO probably wouldn't find a conflict because software and hamburgers aren't related.
If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application is granted and the mark is registered, your registration will be denied because of the likelihood of confusion.
Finally, a trademark or service mark can last forever, as long you continue to do certain things, such as:
- Keep using the mark on or in connection with the goods and/or services in the registration
- File the proper USPTO documents, such as "affidavits of continued use or excusable nonuse" and "applications for renewal"
Using TM, SM, and ®
Any time you claim rights in a mark, you can use the "TM" (trademark) or "SM" (service mark) symbol to alert the public to your claim. You can use those designations even if you don't register your mark with the USPTO. But, the federal registration symbol "®" can be used only after the USPTO grants your registration . You can't use "®" while your application is pending, and you can use it only for the goods and/or services listed in the registration.
The penalties for using a mark without the owner's permission (called "infringement") can be severe. If you infringe someone else's mark, you could have to pay the owner damages, such as lost profits from sales of the owner's goods or services. If someone intentionally uses your mark, he or she might have to pay you damages, all profits he or she made selling goods or services that used the mark, and your attorney's fees.
So, before you begin using a mark, it's a good idea to search the marks registered with the USPTO to make sure the mark you want is available, or get some help from an experienced trademark attorney.