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What is a Trademark?

A trademark is a brand name: a word, phrase, design, sound, or symbol. For example, the designs of the "golden arches" associated with McDonald's fast food restaurants and the Nike "swoosh" are trademarks. This form of intellectual property is significant because the public learns to identify or rely on certain marks to represent a level of quality related to the products or services it purchases. In a sense, trademarks provide reassurance to the public that what they purchase will be of the same quality as other items of that mark.

An individual or company obtains trademark rights in one of two ways. First, a trademark may be obtained by filing an application with the United States Patent & Trademark Office ("USPTO"). The application can be based upon actual use of the trademark on the goods or services you apply for (use-based application) or can be based on a bona fide intent to make use of the mark on a product or in connection with a service (intent-to-use applications, also known as "ITU's"). By filing an ITU, you can establish priority over that mark throughout the country, even though you haven't started using it, and later obtain a registration once you show the USPTO that you have started using the trademark.

Second, common law rights to an trademark can be established simply by using the mark in commerce on a product or in connection with a service. Common law rights, however, are limited to the geographic areas in which the goods or services have been sold and remedies for others infringing are more limited if you only have common law rights.

A federal registration has a number of advantages. For instance, the registration serves as evidence that the owner has the exclusive right to use the mark. In addition to the presumptions of validity in your favor, having a registration also allows you to seek greater damages if someone infringes on your trademark. Another advantage is that any goods manufactured overseas that (improperly) bear the trademark may be excluded from entry into the U.S. by the U.S. Customs Service.

Once you apply for federal registration of a trademark (or a service mark), attorneys with the USPTO will review the application to analyze whether the mark is likely to cause confusion when used in connection with the goods or services. In other words, is the new mark so similar to an existing mark that consumers buying one product would be confused as to who is selling what?

For example, courts have found that the mark "Lexus" on automobiles would not confuse consumers purchasing Lexis database search services. However, courts found that Quality Inn's McSleep would confuse consumers due to McDonald's trademark used in connection with restaurant services, because the "Mc" from McDonald's has come to be associated with the restaurant chain. Thus, the similarity of goods or services as well as the similarity of the marks themselves is closely analyzed. If you have a product you believe can be trademarked, consult with an Orange County attorney specializing in intellectual property to learn more about your rights.

For more information on how to file a trademark, contact the experienced trademark attorneys at MYBE Law today.

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