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| Patent Group | |
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| Trademark Law and Policy | ||
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What is a trademark/servicemark?A trademark is a word, phrase, symbol or logo adopted and used to identify and distinguish the goods or services of one provider from the goods or services of others. A trademark may be thought of as a "brand name" or logo. A trademark represents the "goodwill" of its owner or its owner's business. The owner of a trademark has exclusive right to use it on the product it identifies.Trademark status may also be granted to distinctive and unique packaging, color combinations, building designs, product styles, and overall presentations. It is also possible to receive trademark status for identification that is not on its face distinct or unique but which has developed an additional meaning that identifies it with the product or seller. For all practical purposes, a service mark is the same as a trademark-- except that trademarks promote products while service marks promote services. Some familiar service marks include: KFC (food service) and Roto-Rooter (plumbing service). How long does it last?If used appropriately, a trademark can last indefinitely. One way to lose a trademark is to allow it to become a generic reference for an item, referred to as "genericide".How is a trademark established?Each State has its own statutory and common law regarding trademarks; however when one speaks of "trademarking" one is usually referring to Federal trademark registration, which is governed by the Lanham Act, 15 U.S.C. § § 1051 - 1127. Unlike patent and copyright, there is no basis for trademark rights in the U.S. Constitution. Trademark law is part of the broader law of unfair competition. Although there are legal procedures for registering trademark rights, rights in trademark are actually created by the use of the mark to identify goods or services and not through any registration, be it federal or state.Why should you register a mark?Although one can go to court to protect the use of one's mark without federal registration, federal registration confers some essential benefits to the owner. These include the right to sue in federal court, prima facie evidence of the validity of the registration, a registration system placing the general public on notice of the use and existence of the mark and a system of remedies for infringement of the mark including the recovery of litigation costs, which are not readily available under state law.Under U.S. trademark law, the "®" symbol may only be used in connection with a mark if that mark is a federally registered trademark. "Federally registered" means that the trademark owner has not only filed a trademark registration application with the US Patent & Trademark Office, but has been granted a registration. In contrast, the TM (trademark) and SM (servicemark) symbols may be used freely without respect to whether or not there is a federal trademark registration. How are Trademarks characterized by the Patent and Trademark Office?The breadth of protection afforded a trademark against infringement is directly related to the degree of its uniqueness. The four classes of trademarks are listed below, in order of breadth of protection, beginning with those having the broadest protection.
These are words that have no established meaning. ("Kril" paint company). These are existing words with no relation to the goods or services. ("Life" soap, "Hello" cola) These are words which suggest some attribute of or benefit from the goods or services, but do not describe the goods themselves. ("Instant Health" food services) These describe the services or goods. They cannot be protected until they have achieved distinctiveness through use and advertising, which is called acquiring secondary meaning. ("Thermasilk" heat-activated hair care products) How do you register a mark?The application process can be complicated and last years. An application is filed with an accompanying drawing of the mark, plus specimens of use if the mark has been used. There is a fee for each class of product or service. The PTO allows one to file for registration where the mark has not yet been used in commerce if the owner certifies that he/she intends to use it.A Trademark Office attorney eventually examines the mark to determine whether it deserves to be registered and often raises questions regarding the mark and its use. Once these questions are answered to the examiner's satisfaction, the mark is published in the Official Gazette. A person or entity who believes it might be harmed by the registration has 30 days to oppose the application or to extend the opposition period. If there is no opposition, the registration is issued. Where the application is an intent-to-use application, the applicant receives a notice of allowance. This requires evidence of the actual use of the mark in interstate commerce followed by another examination and then, registration. How do trademarks differ from copyrights and patents?Trademark concerns symbols identifying the source of a product or service -- not the underlying idea (which might be covered by Patent) or the expression of that idea (which might be covered by Copyright). A trademark registration is less expensive than a patent and more expensive than a copyright, and can take from a few weeks for a state registration to more than one year for a federal registration. Trademark registration is not required. Rights in a trademark can last as long as the mark remains in use.Are Internet domain names capable of trademark protection?An Internet domain name that is used to identify and distinguish the goods and/or services of one person, from the goods and/or services of others, and to indicate the source of the goods and/or services may be registered as a trademark in the PTO. The key is that the domain name (e.g. Amazon.com) must actually identify the service etc. that is offered via the web page. Specimens submitted in support of the application to show use of the mark must show use of the Internet domain name as a source identifier. The use of an Internet domain name as a mere directional reference, similar to use of a telephone number or business address on stationery, business cards, or advertisements, is not use of the name as a source identifier. For more, see, PTO - Domain Names.What trademarks are currently owned by LBNL?LBNL currently has three registered trademarks: "Genopt" software program, "Hands on Universe" and the "Berkeley Lab" logo.Other Trademark Information Sources
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