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Who's Minding Your Brand or Trademark?

Businesss Law

Posted: February 22, 2008 6:38 p.m.
Updated: April 24, 2008 5:02 a.m.
These days, it is virtually impossible to watch a television commercial or read a print advertisement and not run across a ® or . More and more, companies are promoting the branding of their goods and services and seeking to protect their brand with these little markings. The markings refer to trademarks claimed by the advertiser.

A trademark is any word, name, symbol or device used by a person to identify and distinguish his goods or services from those sold or provided by others and to indicate the source of the goods or services.
Examples of trademarks include the NBC peacock and the three-tone chime used by NBC in its television programming. To qualify as a trademark, the word or symbol must be sufficiently distinctive to distinguish the source of the goods or services.

Marks can be fanciful or made up, such as "Kodak" or arbitrary, that is a common word used in a meaningless context, such as "Apple" for computers. Other marks, such as Greyhound for bus service are suggestive, that is indicating something about the product without actually describing it.

Marks that are merely descriptive of the goods or services to which they relate are not inherently distinctive and do not qualify for trademark protection unless the public associates the mark exclusively with a particular source (called achieving a "secondary meaning"). An example of such a mark is "Sharp" for televisions.

Trademark rights derive from the use of the marks in "commerce" or the ordinary course of trade.

Registration with the United States Patent and Trademark Office, the California Secretary of State or the appropriate governmental agency in any other territory is not required to obtain rights. However, without a registration, the scope of such unregistered or common law trademark rights is limited to the actual use of the mark, that is for the specific product to which it is attached in the geographic area where it is actually used.

Unregistered marks may use the symbol to indicate the owner's claim to rights in the mark.

Registration of trademarks is optional but confers a number of benefits not available to common law marks. The primary benefit of registration is that it confers rights throughout the territory in which it is registered. Thus, a business operating in the Pacific Coast states could obtain rights in California or the entire United States with a California or federal registration, respectively.

Registration also provides constructive notice that the mark is taken and may not be registered by another person for similar goods or services. Federal registration permits the owner of the trademark to use the ® symbol and affords additional remedies for infringement - the unpermitted use of a trademark or a similar mark in a way that is likely to cause confusion for the consumer. A trademark holder is not required to use either the symbol or the ® symbol; however, use of the may help establish the owner's claim of use of the mark to identify its goods or services and to put others on notice of its use, and the failure of the holder of a federally registered trademark to use ® may limit his remedies for infringement.

Registration of a trademark in one country does not confer trademark rights to the owner in any other country. Thus, an international company may undertake the registration of its trademarks in foreign countries. The Madrid Protocol allows for the registration of a trademark in multiple participating countries with a single application. In some countries, rights to trademarks accrue only from registration. Mere use of the mark, while sufficient in the United States, is not enough in these countries. It is advisable to seek registration of a trademark in every country where the goods will be sold.

Businesses work hard to distinguish themselves in the marketplace and to build their "brand" and identity among consumers. Advertising and marketing budgets represent an ever-increasing part of most small and medium sized company budgets. What has your business done to protect the brand and identity that it has built? Registration of your trademarks and vigilance in contesting infringement are key parts of that protection.

Chris Steven Jacobsen is a member of the law firm of Poole & Shaffery, LLP, a law firm which provides general counsel and litigation services to businesses and management personnel. His column represents his own views, and not necessarily those of The Signal. "Business Law" appears Fridays and rotates between members of the Santa Clarita Valley Bar Association.


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