How are trademarks obtained?

In the United States, trademark rights are acquired by using the mark in connection with goods or services.  "Use" usually means placing the mark on the actual goods or on their packaging, or on advertising for the services rendered under the mark, and placing them in interstate or international commerce. 

 

Use of a trademark by a licensee inures to the trademark owner.

Neither a federal nor a state registration is required to obtain trademark rights, although obtaining a registration may greatly assist in enforcing the trademark.

How do I register a trademark?

There are two ways to seek federal registration of a trademark. If the mark is in use "in commerce" -- generally meaning interstate or international commerce -- an application may be filed based on this actual use.  If a mark has not yet been used  but one has a bona fide intent-to-use the mark in commerce in the relatively near future, an application may be filed based on such intent. 

 

However, a federal registration will not be issued until the applicant provides a statement under oath that the mark has been put into use in commerce.

Trademarks can also be registered on the state level, but only if they have actually been used.  State registrations are not nearly as valuable as federal ones, but they can be useful in certain situations.

How should I choose a trademark?

 
 

A trademark is any word, symbol, device or other item that is used to distinguish one's goods or services. 

 

Once a mark is chosen, it is a good idea to perform a search to determine if someone else is already using the same or a similar mark for the same or similar goods and/or services. 

 

Chernoff Vilhauer assists clients with two types of searches.  Relatively simple, in-house computer searching can be done to determine if there are any clear obstacles to the adoption or use of the mark. 

 

Our firm also employs the services of an agency to perform much more comprehensive "full" trademark searches.  This type of search, while not infallible, provides a much more complete picture of whether or not the mark is available for the client's use.

What constitutes trademark infringement?

 

Trademark infringement occurs when there is a likelihood of confusion between the prior user's trademark and the mark being used by the later user. 

 

"Likelihood of confusion" is determined by analyzing an established set of factors, such as the similarity of the marks, the similarity of the goods or services being offered under the respective marks, and the marketing channels used by each party. 

 

This analysis can be quite complex, so if you think someone is infringing your trademark call Chernoff Vilhauer as soon as possible. 

 

The failure to act promptly against an infringer can seriously compromise the ability to enforce your mark.

The information contained on this webpage is for educational purposes only and is not intended to be legal advice.  To discuss a legal issue or obtain legal advice please contact an attorney in our office.

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