Generally, to meet the requirements for registration a mark must not belong to the categories which are not eligible for registration and should be distinctive. In essence, the proposed mark should be identifiable as it's own "brand."
Marks that are not eligible for registration, include those that:
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are immoral, deceptive, or scandalous; |
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may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; |
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marks of the U.S. flag or coat of arms or other insignia of the United States, a State or municipality, or of any foreign nation, or any simulation thereof. |
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consists of or comprises a name, portrait, or signature identifying a particular living individual (except by that person's written consent) |
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consist or are comprised of the name, signature, or portrait of a deceased President of the United States (while the surviving presidential spouse is still living, and unless the spouse consents). |
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are similar to another registered mark |
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consist of a mark or name previously used in the United States by another and has not been abandoned, and which may cause confusion, cause mistake, or deception |
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a mark that is primarily descriptive of the product (rather than indicating its source) |
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a mark that is primarily a surname (particulary if it is a common name). |
Also, generic marks are not eligible for registration, and marks for certain wine or spirits with a false geographical indication of origin (relating to a WTO Agreement) are not eligible for registration.
It is interesting to note that some of the categories for non-registerable marks are subjective, particularly those that may be "immoral" or "scandalous." There is no hardline as to what is immoral and there is also the potential conflict with free-speech if such a mark is denied by the Patent and Trademark Office. It is unclear as to what potential mark may be denied on this basis and also the possible result that such a denial would be contested by the attempted registrant.
A trademark, registered or not, applies only to the particular type of goods or service that it is used or will be used to identify. Therefore, a trademark may be registered only for a certain specified type of goods or services. This means that if you register trademark "X" for graphic design services, you generally cannot enforce it against someone selling "X" brand automobile tires.
The purpose of trademarks, in concept, is to protect consumers from being deceived about the source of the products they purchase. However, for the maker of the product, federal registration provides certain advantages in regards to protection of the mark including establishing a presumption ownership (in the event of a challenge), the right to use the mark, and the ability to obtain trademark registration in other countries.
It should be noted that simply filing a trademark application does not create a registered mark. Rather, the submitted mark must be accepted as valid according to certain criteria, by the Trademark Office, and then it will be established as a registered mark. Even if the registration is accepted by the Trademark Office, this will not ensure that others will never challenge your mark. Because of this and other reasons, developing an distinctive mark and doing thorough research prior to using it is important.
The basic filing fee for online registration is $275 (August 2008), but this does not include associate costs of investigation and the potential of additional requirements. Self-registration is possible, but it requires diligence and an understanding of the issues to be both cost and risk effective. An attorney may be hired to register a federal trademark. This is not required, but much of the material available from the Patent and Trademark office is geared towards attorneys and is not particularly user-friendly for the average non-lawyer.
Other Responsibilities
For registered or unregistered marks, trademark owners are required to police their marks and additional expenses maybe involved in relation to legal services and potential actions against infringers. Policing generally means that the trademark owner must diligently challenge infringers of the mark and should also ensure that any licensees are maintaining the quality of the (marked) product. When a trademark is found to be unadequately policed, and it has lost meaning as a true source indicator, then the owner may lose the right to exclude others from using the mark. Alternatively, if someone believes that you have infringed on their mark; there are costs associated with defending yourself from charges of infringement. (This is one of the reasons why pre-registration reasearch is important, however the problem can arise for users of unregistered marks as well).
Non-registered Trademarks
A trademark need not be registered to be used. A non-registered trademark may be simply created and used by an artist or other person, so long as it is legitimate and somehow used in trade.2 As mentioned above, however, it is prudent to research other trademarks prior to using your own in order to lessen the possibility of a conflict with an existing mark in the marketplace. Individual states typically have laws that protect unregistered trademarks. When a state law is the basis for trademark use, the protection, use, and possible filing requirements may vary by state. (Generally, state trademark protection does not require registration.)
A prudent user of an unregistered trademark may consider investigating the specifics of the local state’s trademark laws and regulations, particularly if there will be no federal registration. This saves cost, but there are limitations. If the trademark is valid and legitimate (distinctive, not similar to another, etc.), the protected use will typically only encompass the geographical area in which the relevant mark was used in trade. This area may be limited to a city or area of a state, a state, or a regional area. If for example, a graphic designer uses a non-registered trademark logo "Z" brand design only in New York, the "Z" brand design logo is not protected in California–and another designer may use it there without a conflict, generally. A non-registered mark is protected only in the area that it was actually used. A conflict might arise if a business later expands her services into another area or state and someone else was already using a similar logo there. For example, the New York designer expands her services to California. In such a situation, the second-comer graphic designer (NY) would probably be restricted from using the "Z" trademark where it conflicts with the established user. Since unregistered protection is region-to-region, this may occur even if the New York designer was using "Z" in her home state prior to the California designer's local use.
Alternative Protection
In a practical sense, most fine-art visual artists will use non-registered trademarks. Registration and the associated expenses are often too costly. For most artists, using their own unregistered name is sufficient for their purposes. If there is a situation where someone else is trying to pass off some other work for the artist's work, then there are other legal remedies available–such as the aforementioned state laws pertaining to unfair competition, as well as VARA and local artists rights laws. However, when an artist is using a trademark that is a logo, or perhaps a word/phrase that is not his or her own name, it may be worthwhile to investigate the mark beforehand to ensure that someone else's prior existing mark is not being infringed.
Researching Trademarks
Research into registered marks can begin on the Trademark Office's website. Research into potentially conflicting unregistered marks can include online searches, the local telephonebook, industry associations, artist databases/archives, advertisement/classified listings, and community organization listings. These sources may not include each and every current use of a mark, but they will provide the basis for a trademark search.
TM and R
If you are using a non-registered trademark, then you can use the ™ “TM” (trademark) indicator alongside your mark.4 The "®" (R in a circle) may ONLY be used for completed federally registered trademarks.
Notes
See also, VARA.
Resources
Federal Trademark Law, Marks Registerable on Principle Register, 15 U.S.C. 1052, from Cornell University: www4.law.cornell.edu/uscode/15/1052.html (January 2007)
Federal Trademark Law on Bitlaw: www.bitlaw.com/source/15usc/ (2005).
4 Be aware that this applies only to the United States. Some other countries have substantial penalties for goods imported into their countries that are marked TM or R, but are not registered in that particular country.
Copyright © 2008 - 2009-2009 Jennifer Unruh. Licensing Information.
Unless otherwise stated, the original writings contained in this website are solely the expression of opinion by the author(s) and are not intended to provide or be a substitute for professional legal advice. Statues and other governmental publications are provided for informational and educational purposes only. For legal matters, the advice of an attorney should be timely sought. Be aware that the preservation of legal rights may be time sensitive. The author(s) does not promote or endorse any particular legal service provider. This website is not attorney advertising.
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