TRADEMARKS

Trademarks, or marks, are words, symbols, designs, combinations
of letters or numbers, or other devices that identify
and distinguish products and services in the
marketplace. When trademarks are presented to the public
via advertising, marketing, trade shows, or other
means, they become one of a company’s most valuable
assets—potential customers identify a company by its
trademark. Because certain trademarks immediately create
an image of quality goods and services to potential buyers,
they are valuable assets that should be protected.
When trademarks are registered at the state, federal,
or international levels, their owners are provided the maximum
legal protection for company names and/or company
products. Thus, in creating or selecting company
names and trademarks, a major concern is to design
names and trademarks that may be registered with U.S.
Patent Office. Today, the feasibility of designing names for
products and services as well as trademarks for them is not
likely because millions of trademarks are already registered.
The creation of trademarks involves the development
of symbols or other devices to identify products and services
in the marketplace. Guidelines exist for creating
trademarks. Individuals who are developing trademarks
must avoid generically descriptive and misleading terms as
well as foreign translations. As soon as a tentative trademark
has been developed, its creators should consult a
patent attorney for assistance making it sufficiently distinctive
to be registrable.
After the distinctive trademark has been designed, the
creators need to ascertain that it is available for use. That
is, it should not be currently used by another company.
Thus, a trademark search is recommended by a company
specializing in trade and service mark law. Once the availability
of the proposed trademark has been certified,
applications and related artwork are filed with the U.S.
Patent Office. On receipt of the application, examiners in
the Patent Office conduct a search to validate that the
proposed trademark is not confusingly similar to previously
registered trademarks and is thus usable. To receive
a filing registration date, the owner must provide all of the
following: (1) a written application form; (2) a drawing of
The Chicago Cubs logo is a registered trademark. © SANDY
FELSENTHAL/CORBIS

ENCYCLOPEDIA OF BUSINESS AND FINANCE, SECOND EDITION 739
Trading Blocs
the mark on a separate piece of paper; (3) the required filing
fee; and (4) if the application is filed based on prior
use of the mark in commerce, three specimens for each
class of goods or services. The specimens must show actual
use of the mark with the goods or services. The specimens
may be identical or they may be examples of three different
uses showing the same mark.
If the Patent Office search does not yield any conflicting
trademarks and the proposed trademark is deemed
registrable, it is published for opposition in the Patent
Office’s Official Gazette. Anyone who believes that a company
may be damaged by the registration of the proposed
trademark has an opportunity to challenge its registration.
If no objection to the proposed trademark is filed, then
the registration is allowed and issued. Thus, the trademark
is distinctive and the ® may be used after it. Once the
trademark has been issued by the Patent Office, its owners
need to watch for inappropriate use of it. In addition,
trademark owners need to monitor proposed trademark
registrations for similar trademarks.
Trademark maintenance involves periodic filing of
documents with the Patent Office to keep the registration
active. Unlike copyrights or patents, trademark rights can
last indefinitely if the owner continues to use the mark to
identify its goods or services. The term of a federal trademark
registration is ten years, with ten-year renewal terms.
However, between the fifth and sixth year after the date of
initial registration, the registrant must file an affidavit setting
forth certain information to keep the registration
alive. If no affidavit is filed, the registration is canceled. A
U.S. registration provides protection only in the United
States and its territories. The owner of a mark who wishes
to protect it in other countries must seek protection in
each country separately under the relevant laws. The U.S.
Patent Office cannot provide information or advice concerning
protection in other countries. Interested parties
may inquire directly in the relevant country or its U.S. offices or through an attorney.