What is a Trademark or Service Mark?

Trademarks in general are the core asset of a company. The trademark or service mark does not gain this position just by sitting passively on a trademark register. Indeed, it is not the registered trademark which is the company asset or the number of trademark registrations, but the brand. The brand, however, does not come for free. It is not built overnight. A successful brand is the result of huge investments often over a long period of time. A strong trademark is the result and the expression of excellent quality of a particular product or service as well as successful marketing and a healthy corporate culture which requires high levels of investment.

A trademark is a word, symbol, design, number or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Without the ability to distinguish the value and quality of one’s goods or services from another’s goods or services, it would be impossible to obtain a competitive edge in today’s fast paced market.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a different mark. Trademarks or service marks, which are used in interstate or foreign commerce, may be registered with the Patent and Trademark Office.

Although registering your mark before a respective state entity or the federal government is highly beneficial to the trademark or service mark owner, one can establish rights in a mark based on legitimate use of the mark without a registration under state or common law rights. Simply offering a product or service for sale under a particular mark is enough to establish trademark or service mark rights. However, owning a federal trademark registration on the Principal Register provides several advantages such as:

• constructive notice to the public of the registrant’s claim of ownership of the mark
• a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration
• the ability to bring an action concerning the mark in federal court
• the use of the U.S registration as a basis to obtain registration in foreign countries
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Trademark Infringement The elements for a successful trademark infringement claim have been well established under both federal and state case law. In brief, a plaintiff in a trademark case has the burden of proving that the defendant’s use of a mark has created a likelihood-of-confusion about the origin or association of the defendant’s goods or services with the plaintiff’s good or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark, i.e., continuous use of the mark in commerce. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public.

The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was federally registered, attorney’s fees would also be available to a successful plaintiff. Monetary damages are also available under the Lanham Act in the form of lost profits by the plaintiff or gained profits by the defendant; however, in practice are rarely awarded in trademark lawsuits.