T
E
LAW
For the General Practitioner By Angela Ohm
Much media attention has been focused recently on an area of law nm known for grabbing headlines; namdy, ""demark law. The advent of the internet has caused the opening of a new frontier in trademarks in the form of domain name registrations. Both well-known individuals and companies have found themselves unable to use their rrademarked iclenriries for the domain names of their Internet web sites because someone else has beaten them to it. As small businesses proliferate, and rhe Internet becomes an important parr of their prosperity. it is becoming more likely that attorneys with a general practice wiU find that issues involving trademark law will be a faeroe in the commercial aspect of their pracrice. This anide is intended as an introduction co tfademark law, with an emphasis on obtaining trademark registration.
WHAT CONSTITUTES A TRADEMARK? Basically. a trademark is a brand name in the form of a word, phrase, symbol, design or combination thereof, which identifies me source of me goods of one party and distinguishes the goods from those of orhers. Service marks do me same for the source of a service. Trademarks will normally appear on the product or its packaging, while service marks normally appear in the advertising for services.! Trademarks are a type of intdlecrual property. but while trademarks protect the goodwill of a business, patents protect inventions and copyrighrs protect artistic and literary creations. The designations of TM (""demark) or SM (serviee mark) are used to alert rhe public that someone claims rights in rhe mark. It does not mean mar the mark in question is registered or mar a regisrration is pending, nor does it speak to rhe validity of rhe claim. However, the registration symbol 速 may
only be used if a mark is registered wim me Patent and Trademark Office (PTO) and should nor be used ar any point prior to registration. 2
HOW DO YOU OBTAIN RlGHTS
IN A MARK? Federal registration of your mark wim me United States Patent and Trademark Office (PTO) is by far rhe best merhod of securing your rights to a mark. However. it is not required ro establish rights in a mark or ro begin using the mark. Scate registration can secure some rights for a mark used only wimin the particular state. There are also common law trademark rights, which are based upon actual use of the mark, but they are not as far reaching as federaJ registration. Some advantages to obtaining federaJ registration are; (I) Registration can last indefinitely if the owner continues to use the mark to identify its goods or services (me term of federal registration is 10 years, wim 10 year renewal terms - nOte; between the 5th and 6th year of the date initial registration, the registrant must file an affidavit setting forth cerrain information to keep me regisrration alive - if it is nOt filed, the registration is cancded);> (2) Registration provides the owner with nationwide priority rights from me filing dare of the application for registration;" (3) It provides the owner with presumptive evidence of the validity of the registration, ownership of the mark, and the right to use me mark upon the date of the application for registration; ; (4) It provides the owner with presumptive evidence of the validity of the registration, ownership of me mark, and the right to use the mark everywhere in me
U.S.;6 Angela June Ohm works for ABF Freighr System, Inc. and focuses on rransponarion, contract and trademark law.
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damages for coumerfeiting a mark;8 and (7) Registration gives you rhe right ro obta..in registrations in foreign countries pursuant to international ueaties m which the U.S. participates. 9
(5) A copy of rhe registration can be filed with the U.S. Customs Service to block the importation of products which infringe the owner's rights;? (6) The Trademark Acr of 1946 (The Lanham Act) provides unannounced seiwre remedies and increasing civil
ARE THERE BENEFITS TO STATE REGISTRATION? The only real advantage to state registration is that, unlike the Lanham Aer. mere is no requirement that me owner be engaged in either interstate or foreign commerce. It only offers protection against infringement within the State of Arkansas; it offers none against infringement outside me state and does nor provide a defense to me owner from claims of infringement against other marks. 10
WHAT IS THE RELEVANT LEGISLATION? Federal -
Trademark Act of 1946 (L1nham Act), as amended 15 U.S.c. Section 1051 et. seq.; The Trademark Rules, 37 CFR Part 2; The Manual of Examining Procedure (2nd ed. 1993); State Arkansas Trademark Act (AR Code Ann. 4-71-201 to 218 Supp. 1997); Common law APPLYING FOR FEDERAL
REGISTRATION If your dient is already using the mark in commerce, they may fiJe a use application. If they are not yet using the mark in commerce, mey should file an intent-to-use application. There are two Registers. me Primary and Supplemental Registers. on which rhe mark can be placed. The Primary is me preferred regisrer and bestows the most righrs in rhe mark. The Supplemental Register is used for those marks that do not meet the requirements of the Primary Register, bur are still capable of distinguishing the goods of the applicam. For your client to file based on its use of me mark, the use must be a bona fide use in the ordinary course of trade and not merely