Trademarks, Service Marks, and Small Businesses

An often underappreciated part of running a small businesses is intellectual property. The primary intellectual property assets are copyrights, patents, service marks, and trademarks. Copyrights protect original works of authorship such as books, pamphlets, and brochures. Patents protect inventions and processes. Trademarks and service marks protect brand identifiers such as names and logos.

This article will explain what a trademark is, why you should consider a trademark, how you can register a mark under federal law, and how you can protect your trademark. Trademarks and service marks are governed by federal law, the Lanham Act. The term “trademark” generally is used to encapsulate both trademarks and service marks.

1. What Are Trademarks And Service Marks?

In essence, the value of a trademark is to give the consuming public information about the source or origin of goods or services. So, rather than being content with you buying any kind of first aid bandage, Johnson & Johnson regaled us in the 1970’s with a jingle that said, “I am stuck on Band-Aid brand, ‘cause Band Aid stuck on me!” A trademark is “any word, name, symbol, or device, or any combination” that is “used by a person, or which a person has a bona fide intention to use in commerce and applies to register on the principal register . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”[1] A trademark is slightly different from a service mark, which is “any word, name, symbol, or device, or any combination” that is used “to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.”[2] Trademarks and service marks are protected under common law and federal law whether or not they are registered with the United States Trademark Office, often referred to as the USPTO. However, registered marks benefit from additional protections and are easier to defend, as explained below.

Georgia law also contains some protections for marks registered with the Georgia Secretary of State.[3] For further information please reach out to the authors below.

2. Why Consider A Trademark?

One reason to consider applying for a mark is to protect the reputation of your company. Registering your business name with the Secretary of State’s Office prevents competitors from using identical names in Georgia; however, it does not protect you from similar names being used or apply to out of state companies using the same business name. Additionally, it does not protect your brand or logo. You have spent considerable time and effort in building a brand that your clients and the community will recognize and respect. If you do not take steps to obtain trademark protection for your company name or logo, you may find others attempting to trade on the brand recognition and goodwill you worked hard to build. Having federally-registered trademark means others may not legally use a name or mark that is identical to, or confusingly similar to, your trademark. Creating in the minds of the consuming public a positive association with your company’s products and services can be incredibly valuable, and can distinguish a service business with strong goodwill from one the consuming public sees as offering a mere commodity, indistinguishable from a hundred other companies.

3. Why Should You Seek to Register Your Trademark With The USPTO?

Applying for  federal registration for your trademark fortifies your brand recognition, helps distinguish your company’s services, and helps protect against others creating the misimpression of being associated with your company’s good reputation. A federally-registered trademark provides nationwide geographic protection for your mark. Once registered, a trademark must be renewed every ten years, and you must show, between the fifth and sixth year after registration, that you are still using the mark in commerce. Registering your trademark puts the public on notice that the mark is yours, which is an essential element to prove in a claim that your mark has been infringed upon.[4] Registering your mark also establishes a date that you were using the mark in commerce.[5] Once your mark is registered, there is a presumption that you own the mark and that you have the exclusive right to use the mark.[6] It is also enables you that you can defend your mark in federal court under the Lanham Act, and may entitle you to enhanced money damages.[7] This gives you much stronger protections for your mark and more effective ways to defend your mark against competitors.

4. How To Register Your Mark Under Federal Law?

To obtain additional protection under federal law, you should register your mark with the USPTO. To register, you must file an application with the USPTO. The USPTO contains a search engine that will help you determine whether your mark is available.[8] There are other services that can provide a more complete picture of whether your mark can be registered. Trademark registration is not a “rubber stamp.” An examiner in the USPTO will closely examine your application and has discretion to approve or deny it. An attorney can advise on how best to assess the likelihood of success before filing your trademark application.

The USPTO application requires you to provide your name and address, whether you are represented by counsel in the application process, any word or words that comprise your mark, a “clear drawing” a logo, a “listing of the goods or services,” and the applicable filing fees.[9] Your application must identify which of the forty-five (45) classes of goods and services applies to your trademark. You also need to explain whether your trademark is being used in commerce or if you intend to use your mark in commerce.[10] If you are already using your trademark in commerce, you must submit at least “[o]ne specimen showing how the applicant uses the mark in commerce” and the date that you first began using the mark.[11] If you have not yet used the trademark, but you plan to use the trademark but intend to, you must provide a verified statement of your “bona fide intention to use the mark in commerce” and provide supplemental proof of use to the USPTO later.[12] The USPTO will review your trademark to determine whether someone else already claims the trademark, whether it would cause confusion with another trademark.[13] Because of the complexities of filing a trademark application and ensuring that your mark is distinctive, you should strongly consider consulting with an attorney before proceeding.

5. How Can You Protect Your Trademark?

Having a federal trademark registration is like having a puppy; it creates responsibilities.  A mark that was once distinctive can cease to be so.  Some marks that formerly enjoyed trademark protection became so generic that the public no longer thought the mar described a particular source of goods or services, but only the goods or services themselves.  ASPIRIN, ESCALATOR and THERMOS are examples of marks that were trademarks, but ceased to function as such.  For this reason, the owner of a trademark must vigilantly “police” its mark  This means an owner must be watchful for others misusing its mark, or confusingly similar marks. When the owner becomes aware of such misuse, it must take steps to stop the misuse, such as sending cease and desist letters or even filing a lawsuit. Otherwise, what is a valuable trademark may be the no more distinctive than ASPIRIN tomorrow. If you have questions on whether a particular mark may serve as a trademark or service mark, please reach out to an attorney.

This article is not intended to provide “legal advice” on the issues discussed in it and does not create an attorney-client relationship. It is only for informational purposes. Please contact Slotkin Law Firm or another attorney who is knowledgeable in this area of the law about your specific situation before taking any action.

[1] 15 U.S.C. § 1127 (emphasis added); see also O.C.G.A. § 10-1-440.

[2] 15 U.S.C. § 1127 (emphasis added).

[3] See generally O.C.G.A. § 10-1-440, et seq.

[4] 15 U.S.C. § 1072.

[5] 15 U.S.C. § 1057(b)

[6] 15 U.S.C. § 1057(b).

[7] See generally 15 U.S.C. § 1051 et seq.

[8] See generally, “Search trademark database” United States Patent and Trademark Office https://www.uspto.gov/trademarks/search.

[9] 37 C.F.R. § 2.21 (2021).

[10] 37 C.F.R. § 2.34 (2021).

[11] 37 C.F.R. § 2.34(a) (2021).

[12] 37 C.F.R. § 2.34(b) (2021).

[13] 15 U.S.C. 1052(d).