When tangible property is stolen from the workplace, the owner usually becomes immediately aware of the loss. Yet the daily misuse of a company's intellectual property - its logo or trademark - constitutes theft that can be far more damaging. An organization's intellectual property is protected by trademarks (on the company name or logo), patents (on its inventions or product designs), and copyrights (on the literary, musical, or photographic products) generated by or for the company.
A trademark is potentially the most valuable asset of an organization. It is a word, symbol, design, or combination of these elements which identifies one's products and services and distinguishes them from others in the marketplace. The identity created by a distinct trademark is priceless in the customer loyalty and product awareness it generates. Trademarks extend the company's public image not only through the product or service, but also through printed material, packaging, and advertising which bear that mark.
An owner can protect a trademark by common law or by federal registration. Common-law protection begins with the first use of a mark and is indicated by TM , while federal registration requires a more complicated procedure.
Why Register a Trademark?
An unregistered trademark (TM) is protected by common law only within states where it is used. When a trademark is used in interstate commerce experts suggest that it is in the owner's best interests to register the trademark (®) with the Federal Patent and Trademark Office (PTO). Such registration guarantees ownership of the mark and entitlement to its use throughout the nation. It can be devastating to a corporation to establish a product name and trademark recognition only to find that its use is challenged by a previously unknown owner. Registration protects against litigation and liability as well as costly damages. When a trademark is to be used in a complicated manner, it is wise to consult a lawyer regarding the value of federally registering the mark.
Once a trademark is registered, ownership continues for a renewable period of ten years. Midway through the first decade, however, the owner must file an affidavit of intent to continue use of the trademark. In the absence of such documentation, the registration is canceled.
Life Cycle of a Trademark
Whenever a new business is begun or a new product line is established in an existing company, a unique name, trademark, or logo is created. A corporate trademark, name, or symbol evolves out of the following process:
- Possible names are suggested in brainstorming sessions, by use of software designed to generate names, or by name-creation consultants.
- Suggestions are screened via trademark directories or on-line research systems to determine the existence of conflicting U.S. federal, state, or international trademark registrations or applications.
- Candidates that survive the initial screening are subjected to professional trademark searches and reports on the availability of use of the desired trademark.
- An application and filing fee are presented to the Patent and Trademark Office (PTO) of the U.S. Department of Commerce and the application is reviewed by its federal staff.
- If no opposition or conflict is found in the application review process, the trademark is presented in the PTO's official gazette for opposition or challenge.
- Having cleared this last hurdle, the owner of the proposed trademark is permitted to register the trademark. All subsequent use of the trademark should include the symbol ® as notification that the trademark is protected under federal trademark law. It is important to note, however, that a mark may be challenged for up to five years under federal law.
How to File an Application for Registration
The trademark owner can apply for registration independently or may be represented by an attorney. The risks associated with the financial advantages of self-representation include the possibility of having the application rejected and forfeiting the application fee if the PTO attorney discovers a conflicting mark. However, with some reasonable preparation, an enterprising individual can complete the application form and proceed through at least the initial stages of the procedure.
When a reasonably thorough search is conducted and no conflicting marks are uncovered, the application may be completed and submitted with the fee to the PTO for review.
Application for registration requires:
- A completed application form;
- A drawing of the mark to be used;
- Specimens showing intended use of the mark;
- Filing fee ($210 or more; check with the PTO).
The PTO has documented all the pertinent information about trademark registration applications and filing requirements in a useful booklet called Basic Facts About Trademarks. All correspondence with the PTO, as well as requests for this booklet, can be addressed to: The Commissioner of Patents and Trademarks Washington, DC 20231. Other useful phone numbers include: General Trademark or Patent Information (703) 308-4357; Automated (Recorded) General Trademark or Patent Information (800) 557-4636; Automated Line for Status Information on Trademark Applications (703) 305-8747; Copyright Information (Library of Congress) (202) 707-3000.