Trademark: Overview

A trademark represents one of several types of intellectual property protected by US law. Trademarks are protected in the US at both the federal and state level.

A trademark:

 ? Identifies a single source of origin for goods and services.

? Distinguishes the owner’s goods and services from those of others.

? Provides the owner of the mark with the right to prevent others from adopting similar marks likely to cause confusion in the marketplace.

Types of Trademarks

Under the Lanham Act, a trademark generally includes any of the following when used to identify and distinguish goods or services:

? Word.

? Name.

? Symbol.

? Device.

The term "service mark" is sometimes used to refer to a trademark that is used for services.

In some circumstances trademarks may consist of:

? Colors.

? Sounds.

? Scents.

Trade Dress

 Under certain circumstances trade dress may be protectable as a trademark.

Collective Marks and Certification Marks

The Lanham Act also recognizes and provides for registration of:

? Collective marks.

? Certification marks.

Requirements for Federal Trademark Protection

 To be protected as a trademark at the federal level, a designation must be:

 ? Distinctive (see Distinctiveness).

? Used in interstate commerce (see Use in Commerce).

Distinctiveness

 Distinctiveness is the ability of a designation to identify a single source of goods or services. Distinctiveness may be either:

 ? Inherent (see Inherent Distinctiveness).

? Acquired (see Acquired Distinctiveness).

Inherent Distinctiveness

A mark is inherently distinctive if it is immediately capable of identifying a source of origin for a good or service.

Inherent distinctiveness is generally analyzed along a spectrum of distinctiveness ranging from generic terms, which are not protectable under any circumstances, to highly distinctive fanciful marks, which have the broadest scope of inherent protection.

Acquired Distinctiveness

Some terms that are not inherently distinctive may acquire distinctiveness (also known as secondary meaning), and be capable of protection as a trademark, through use and promotion over time. For example, terms that describe a product attribute or characteristic may be protectable if they acquire distinctiveness. Under the Lanham Act, a mark that has been in substantially continuous and exclusive use for five years is entitled to a presumption of acquired distinctiveness (15 U.S.C. § 1052(f)).

 Use in Commerce

In the US, trademark rights at the federal level arise through use of a protectable mark in interstate commerce in connection with goods or services.

At the state level, trademark rights arise through use of the mark in commerce within the state.

Trademark Searching and Clearance

Before using or seeking to register a trademark, a company should conduct trademark clearance. Trademark clearance typically involves:

? Conducting one or more trademark searches, including:

? preliminary or “knock out” searches; and

? full availability searches.

? Analyzing the search results.

? Taking additional steps to attempt to assess and mitigate any risks posed by potential obstacles disclosed in the searches, for example by:

? conducting use investigations of potentially conflicting marks;

? seeking consent or coexistence agreements from third parties that own potentially conflicting marks; or

? petitioning to cancel conflicting registrations.

THIS PUBLICATION DOES NOT CONSTITUTE LEGAL ADVICE, BUT IS A GENERAL OUTLINE FOR DISCUSSION PURPOSES. THIS PUBLICATION WILL NOT BE REVISED PAST ITS PUBLICATION DATE THEREFORE ANY READER SHOULD CHECK THE STATUS OF THE LAW, AND CONTACT AN ATTORNEY WITH ANY QUESTIONS PRIOR TO ANY ACTION. THIS PUBLICATION ONLY OUTLINED COLORADO AND FEDERAL LAW, AS APPLICABLE.