What is a Trademark?
A trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.
Although most people refer to any mark used to designate the source of one's goods or services as a trademark, there are actually four different types of marks:
Trademarks
An actual trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name used in connection with goods (e.g., Nike for shoes, Ford for automobiles, Microsoft for software).
Although generally used to refer to all four classes of marks, the true nature of the trademark is as a brand identifier for actual goods alone.
Service Marks
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
So trademarks are for goods. Service marks are for services. In reality, some of the most famous "trademarks" are actually service marks. Marks such as McDonalds for restaurant services, American for airline services, and Google for search engine services are all service marks, not trademarks.
Certification Marks
A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
Some example of certification marks would be the Energy Star logo for energy efficient items, the Organic mark certifying certain foods to be organically grown, and the certified NSF designation.
Collective Membership Marks
A collective mark is a trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
What Constitutes Use?
For goods, use occurs when goods with the mark displayed on the goods or the packaging for the goods are sent across state lines. With services, use occurs when offering services to those in more than one state or rendering a service, which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.).
Can I Reserve a Trademark Before I Use It?
Yes. A trademark can be "reserved" with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.
Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?
Yes, although a search is not required. Trademark Research allows you to verify that your proposed mark is not in use by another and is available for you to use.
Do I Have To Register a Trademark to Use a Trademark?
No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:
Constructive notice nationwide of your claim of ownership of a trademark;
Registration can be used as a basis for obtaining Registration in Foreign Countries;
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Is a U.S. Federal Registration Valid Outside the U.S.?
A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.
