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Table of Contents

  • How Do I Select A Business Name?

  • What Is A Trademark?

  • What Is A Servicemark?

  • Do I Need To Register My Mark?

  • What is Infringement?

  • What is Dilution?

  • Copyright Basics

  • What is Copyright?

  • What is Patent Law?

  • What is a Trade Secret?

  • Traps for the Unwary


    Frequently Asked Questions

    Trademark Basics

    How Do I Select A Business Name?

    There is much more to selecting a company name than finding a name that you like. You should contact ALP to ensure that you do not infringe upon the trademark or servicemark of a competitor. Back to Top

    What Is A Trademark?

    Trademark law is intended to prevent a person from presenting his goods or services as the goods or services of another or injuring the competition�s brand by introducing goods or services of inferior quality. The basic idea is that consumers benefit from being able to identify the source of goods and services. Back to Top

    Accordingly, a 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, even if the source is unknown. It may be helpful to think of a trademark as a brand name, but it is much more. The term also can include logos, fonts, mottos, and even colors that are associated with a particular product or service. Finally, trademarks and servicemarks are basically the same; the only difference is that the trademark technically applies to goods while the servicemark applies to services. Back to Top

    The Lanham Act is the federal law governing trademark registration, use and infringement. States also have various unfair trade practices laws that also govern trademarks. Back to Top

    What Is A Servicemark?

    A servicemark essentially is the same a trademark, except that it applies to businesses that provide services rather than selling goods. Back to Top

    Do I Need To Register My Mark?

    It is unnecessary to register a trademark or servicemark to use the "TM" and "SM" symbols, but one must register with the federal government in order to use the ® symbol. Unregistered trademarks will receive only limited protection under traditional common law jurisprudence, which varies from state to state. Registering with the federal government entitles the mark holder to nationwide protection. In addition, after five years of uniterrupted use of a registered mark, the mark becomes "incontestable," meaning that the defenses which may be raised in an infringement action are limited.

    To qualify for federal statutory trademark protection, the mark must be distinctive and the must be utilized in interstate commerce. Distinctive marks generally fall into the following five categories of distinctiveness (lowest to highest) (1) generic marks; (2) descriptive marks; (3) suggestive marks; (4) arbitrary or fanciful marks; and (6) coined marks.

    Generic marks receive no trademark protection. Generic marks identify a class of products or services rather than a particular merchant. �Luxury Sedan,� for example, is a class of cars and not a recognizable mark of any automobile manufacturer. Descriptive marks communicate the components, qualities, or nature of a good or service and the scope of trademark protection depends on the distinctiveness that it develops through use in commerce. A suggestive mark suggests, without description, some good or service, but requires some type of mental connection. The degree of protection that a suggestive mark will receive depends on the distinction that it develops through use in commerce. Arbitrary or fanciful marks are ordinary words used in an incongruent or odd way that has no association with the good or service. For example, a car named Pegasus would be arbitrary. A coined mark has no meaning other than the meaning it derives from the good or service being sold. Famous examples include �Kodak� and �Exxon.�

    Generally speaking, one may register a distinctive mark after it has been used in interstate commerce, subject to specific exceptions.

    A mark is considered used in commerce when it is (1) displayed in any manner on goods, including placement upon labels and containers, (2) displayed in the sale or advertising of services rendered in more than one state or in a single state and a foreign country.

    Under the federal law, a prevailing plaintiff may recover monetary damages, including the defendant's lost profits, any actual losses sustained by the plaintiff, and the costs of court. Punitive damages and attorneys fees also may be available in certain circumstances. It is important to remember that courts also sit in equity, so any monetary damages will be examined to ensure overall fairness. On the other hand, the court may employ its equitable powers to prohibit further use of the confusing mark. Back to Top

    What is Infringement?

    Trademark or servicemark infringement can occur under the federal Lanham Act when one �uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact . . . likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.� To win an infringement claim, the owner must prove ownership of a valid registered mark and likelihood of confusion among the purchasing public. Back to Top

    What is Dilution?

    Dilution can occur when a trademark is used in an unrelated market but tends to dilute the distinctiveness of a famous trademark. So, while there may be no technical infringement, there still may be dilution if the use tarnishes or undermines the positive impression of the mark among consumers. Back to Top

    Copyright Basics

    What is Copyright?

    The Copyright Act grants a creators of a �work�� a very broad statutory term that includes writings, recordings, photos, all forms of artistic expression, and even databases � vast control over how a work is used. Specifically, a copyright owner possesses the exclusive rights to:

    Copyright infringement can occur whenever someone does or authorizes any of these activities without a license from the copyright owner. Many believe that the Fair Use doctrine prevents infringement. This is incorrect. Fair Use is an affirmative defense to a claim of infringement, and the defendant carries the burden of proof to establish that an infringement was fair use. Nevertheless, the Fair Use Doctrine is a philosophical and legal acknowledgment of the fact that a monopoly over expression, if taken to an extreme, can restrict rather than promote creativity. Back to Top

    What is Patent Law?

    A patent is a form of intellectual property right over some kind of technological innovation. Unlike Copyright and Trademark protections, the United States government must affirmatively award a patent before there is full protection. There are three types of patents (utility, plant, and design), but this article focuses on the patent that is most commonly associated with the patent process: a utility patent.

    A utility patent applies to �any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof . . . .� It has a term of 20 years from the date of grant. An applicant must demonstrate: (1) patentable subject matter, (2) novelty, (3) usefulness, and (4) nonobviousness. Back to Top

    What is a Trade Secret?

    A trade secret is information, broadly defined, that is reasonably maintained as secret and that derives actual or potential independent economic value from the fact that it is not generally known, and cannot be generally known, by others who can obtain economic value from its disclosure or use. Trade secret law applies broadly to subject matter that patent law does not protect, such as marketing plans, pricing schedules, and customer lists. Trade secrets have many of the attributes of property and can be a low-cost and effective substitute for a patent application. However, you should consult an attorney to ensure that proper policies and procedures are put in place to reasonably maintain secrecy within your company. Back to Top

    Traps for the Unwary

    The Fair Use doctrine is an affirmative defense to a claim of copyright infringement. Any copying of a copyrighted work of another without permission is copyright infringement that could subject you to civil liability and criminal penalties. Consult with an attorney before you copy and use any work of another Back to Top.