A trademark (or service mark) is a word, name, symbol, device, or combination thereof, used to identify and distinguish the source of a product or service from other sources of similar products or services.

In the United States, trademark rights are acquired through adoption and use of the mark and are in effect for as long as the trademark owner continues to use the mark. Federal registration of the mark, however, provides several advantages, including constructive notice to the public of the mark, presumption of the registrant’s ownership of the mark, the use of the U.S. registration as the basis for foreign registrations, the right to bring an action in federal court, and the ability to stop the importation of infringing goods.

Trademark Value and Strength

The value of a trademark increases with the degree of brand recognition and customer loyalty that accompany the mark. A strong trademark in a legal sense enhances the trademark’s value by making it is easier to defend the goodwill of the trademark against those who would infringe upon or dilute the strength of the mark. The legal strength of the trademark is tied to the ability of the mark to distinguish the underlying product or services from those of others. In other words, a mark is stronger if it is less descriptive of the underlying goods or services, and is dissimilar to other marks on competing goods. Thus, the strongest marks in a legal sense are arbitrary or fanciful, made up of unrelated or coined words or symbols.

Enforcement of Trademarks

Trademark owners should be vigilant in policing their trademarks in order to avoid loss of trademark strength. Trademark counsel should be consulted before any discussion of a conflict is instituted against an “infringer.” In addition, federal trademark applications are published for opposition purposes and owners of prior trademark rights (via prior use, application or registration) may oppose registration or request extensions to oppose within 30 days of the publication of a confusingly similar mark. (Most foreign countries also publish applications for this purpose). Accordingly, maintaining a standing watch for published applications may provide an opportunity for preventing registration of a conflicting mark.

It should be noted that trademarks, like patents, are territorial, meaning that the rights and remedies afforded a trademark under the laws of a country typically end at the border of the country. Each country applies its own rules and laws to determine whether a mark is eligible for registration in that jurisdiction. U.S. applicants should first obtain a basic U.S. application or U.S. registration prior to filing an international application. Trademark owners should file a trademark application in a given country as soon as plans to use the mark in that country are definite, particularly in “civil law” nations where the registration is given to the first party to file.

The owner of a Federal Trademark Registration may bring a civil action in federal court for trademark infringement. In addition, the Trademark Act provides federal court jurisdiction for claims for unfair competition even when the plaintiff does not own a Federal registration but claims prior use of a trademark.

The basic test for trademark infringement is whether the accused infringing mark is “likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Thus, the plaintiff must show that the defendant’s mark might confuse a typical customer as to the origin of the associated goods or services. Alternatively, the owner of a trademark that has achieved a degree of “fame” may bring an action for trademark “dilution” against the use of a mark that, while not confusing, has the effect of weakening the strength of the famous mark. This essentially prevents others from deriving the benefits of the trademark owner’s substantial goodwill. Remedies for a prevailing plaintiff in either cause of action described here include injunctive relief and in some cases damages or defendant's profits and in exceptional cases, attorney's fees.

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