Trademark Law

Below information about trademark law is informational only. It is intended to give you the very basic outline of the trademark law. Please contact us by email or by phone for appointment, to discuss further about your need about trademark matters. We provide consultation in the following areas:

1. Trademark full clearance search (federal & state databases);

2. Filling and prosecution of federal & state trademark applications;

3. Enforcement of your trademark.

 

Statutory definition of trademark: “The term ‘trademark’ includes any word, name, symbol, or device, or any combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127.

Statutory definition of service mark: The service mark definition includes essentially the similar definition as above except with the caveat that it is used “… to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown….” 15 U.S.C. § 1127.

Protection: Trademarks and service marks acquire protection by being “inherently distinctive,” or by acquiring “secondary meaning.”

Trade dress: It is the overall look and feel of goods, services, product packing or any labeling associated with the mark. It includes any thing from design, shape, color variations used, texture etc.

Federal registration is available only in two situations. You need to select either of the following:

Intent to use:The trademark applicant must have bona fide intent to use the mark while filing for federal protection. After the trademark, service mark, or trade dress is used in “inter-state commerce,” the date of filing (which is earlier than the date of actual use) becomes the “priority date.” You can enforce your mark in the market-place for infringement purposes from that date.

In-use: The trademark applicant need to affirmatively state the date of actual use in “interstate commerce,” along with proof of a “specimen” for evidence purposes.