MARK TRADEMAN, TMIN NEWS ANCHOR: Hello everyone. And welcome to the
Trademark Information Network. I'm Mark Trademan. Here at the network, we are dedicated to bringing
you the most up-to-date information about trademarks. What they are. Why they're
important. And how a trademark registration can help you grow your business. In addition,
we want you to know how to apply to register your trademark with the federal government and,
if successful, keep that registration alive. Hope you'll stay with us throughout the news cycle.
But first, let's establish some background. Specifically, what exactly is a trademark? And how
is that different from a patent? Or a copyright? Standby for some intellectual property basics.
If you've ever wanted to "copyright that patent on your trademark" or "patent that
trademark on your copyright," you're not alone. People often confuse these words,
but the concepts are actually quite simple, once you learn more about them. For example...
Patents protect new and useful inventions, like engines and solar panels, or improved methods
for making things. Trademarks indicate the source of products or services and include brand names,
slogans, and logos. Copyrights protect original works that contain creative expression,
like books, articles, songs, movies, paintings, and sculpture even software code. So, as you
can see, trademarks, patents, and copyrights each protect different types of intellectual property:
inventions, brands, and creative works. How do they work together? Well, let's say you
invented a new type of vacuum cleaner. You might get a patent to protect the invention itself.
You might register a trademark to protect the brand name of the vacuum cleaner.
And you might register a copyright for the TV commercial that you use to market your product,
or even for the product manual. The different types of intellectual
property may all work together, but they are not the same.
So, while you can never "trademark that copyright on your patent," you can spend
your money wisely and protect the intellectual property most important to your business.
And, if you're watching this, that most important asset is probably your trademark. So,
let's delve a little deeper into what a trademark is and why you'd want to protect one, by turning
to our Senior News Analyst, Grant Gainsworth.
GRANT GAINSWORTH: TMIN SENIOR NEWS ANALYST: Ancient stone seals. Ceramic pots. Clay bricks.
Crumbling now, but still forming the solid foundation of modern trademark law.
From the time that humans began to roam the Earth, people have used
marks to indicate the maker or producer of goods. Egyptians, Greeks, and Romans, for example,
all used marks to indicate who made particular bricks and ceramics.
And, in the case of the Romans, who was to blame should the brickwork fail...
Though the uses of trademarks, and their complexity and design, have evolved,
the central meaning of trademarks has remained the same: trademarks indicate source.
Essentially, a trademark is any word, letter, number, design, or combination of those,
that identifies one party as the source of particular goods and services.
Makes sense, right? When you see a logo on a digital camera, or a bunch of bananas,
or a pair of jeans, you know who made or produced those goods. You use the logo
to distinguish the goods you want from the goods made or produced by a competing brand.
Which explains why trademarks are so important. Over time, trademarks gain reputations.
Sometimes good; sometimes bad. But consumers come to expect a certain level of quality
based upon that reputation, which then drives their purchasing decisions.
MARK: So the question then becomes:
"How do I get a trademark?" and "How do I protect it?" For answers, we turn
to investigative reporter Camille Ki Kwon.
CAMILLE KI KWON, TMIN INVESTIGATIVE REPORTER: Those are great questions, Mark, and they
bring up a fairly common misconception. There's a difference between using or "getting"
a trademark and owning a federal registration for that trademark.
Here's how it works. As Grant said, anytime you use a word,
letter, number, slogan, design, or combination of these, to indicate the source of goods or services
in the marketplace, that's a trademark.
Basically, there are two ways to protect your mark:
you can protect it under common law or you can federally register it and
gain additional protection. You create common law rights when you first
start using your trademark. But: your rights are created under state law and are tied to
your use of the mark. So, if you only use it in a limited geographic area, your enforceable rights
may only cover a limited geographic area. That's in contrast to what happens when you
federally register your mark. When you register your trademark with the USPTO, your rights become
nationwide rights.
MARK: What kinds of rights are you talking about?
CAMILLE: Well, according to several officials here at the office,
there are quite a few. The greatest is nationwide protection. Specifically,
a federal registration creates a legal presumption that you have the exclusive right to use that mark
throughout the country and U.S. territories. In addition, it puts the public on notice that
you have that right. And, should you encounter unauthorized use of your mark by another party,
you can sue that party in federal court for infringement of your registered mark.
Plus, you can use your registration as a basis for registering your mark in a foreign country
and to stop counterfeit and infringing goods from entering this country.
Those are some pretty powerful tools.
MARK: So, it sounds like federal registration has significant benefits. Does the USPTO help enforce
and defend rights in a registered mark?
CAMILLE: No. That duty belongs to the individual trademark owner. But, according
to one of my sources, registration does provide a sort-of "automatic" layer of protection.
If you have a live federal registration and someone else tries to register a confusingly
similar mark for related goods or services, the Office will refuse registration of that mark
as part of the thorough examination process that the Office performs on every application. So,
while the USPTO doesn't "defend" your mark, per se, the registration process itself
does provide a first line of defense. Frequently, when applicants receive a refusal based on your
prior registration, they simply choose another mark, saving you the trouble (and the expense) of
having to negotiate or litigate with them.
MARK: Got it. Now, what about "TM" and "SM" and "R in the circle." How do those fit in?
CAMILLE: Right. Good question. Think back to the
two kinds of trademark rights I mentioned earlier: common law and federally registered. "TM" and "SM"
indicate a common law trademark or service mark. The "R in the circle" symbol indicates you've
registered it with the federal government.
MARK: But, to be clear, you're saying that a person can have and use a trademark
without ever registering it with the USPTO.
CAMILLE: That's right. There's no requirement that you register your mark with the USPTO,
or with your state. But: if you don't get a federal registration,
you miss out on powerful tools and remedies that can help you better protect your mark.
MARK: Not to mention using the "R in the circle" symbol, right?
CAMILLE: That's right. Gotta get that "R"...
MARK: Absolutely. Thanks, Camille. CAMILLE: Anytime!
MARK: Grant? Any final words?
GRANT: So, remember, folks: a trademark can be any word,
letter, number, design, or combination of those, that indicates the source of
particular goods and services. Federal registration of your mark is not
required, but it does grant you a powerful set of rights that you can use to protect
your mark. Rights that ancient brickmakers in Rome never would have dreamed of...
MARK: Thanks, guys. Fascinating stuff.
And that's about all the time we have for this broadcast, ladies and gentlemen. But don't worry.
We have plenty more videos for you, covering many of the major concepts of trademark registration.
All of them available on USPTO.gov.
And while you're on the website, be sure to check out all of the other
provided information and electronic resources.
You can learn more trademark basics, from how to select a strong mark
to how to avoid filing for a mark that is likely to cause confusion.
You can then use the Trademark Electronic Search System (or TESS, T-E-S-S)
to search for conflicting registered and applied-for marks before filing.
Use the Trademark Electronic Application System (or TEAS, T-E-A-S) to actually apply
for registration. And use the Trademark Status and Document Retrieval system (or TSDR) to check
the status of, as well as access all the documents in, your trademark application or registration.
You can also get in-depth answers to your specific questions about how the Office
will examine your application by consulting the TMEP, or Trademark Manual of Examining Procedure.
It's the Office's resource for everything you need to know about applying to
register a trademark with the USPTO.
Remember: trademark rights are legal rights.
And the federal registration process is a legal proceeding governed by U.S. law.
If you need assistance when applying to register your mark,
you should hire an experienced trademark attorney, licensed to
practice law in the United States, to represent you.
And remember: if you are a foreign-domiciled applicant,
you must hire a U.S. licensed attorney to represent you.
For Camille Ki Kwon and Grant Gainsworth,
I'm Mark Trademan, Trademark Information Network.
Thanks for joining us.