We have spoken about protecting each new work that is created in your agency with a copyright. This causes some confusion among Second Wind readers over the differences between © copyright, ® registered, TM trademark, and SM service mark. Herein we explain the differences.
Trademarks are marks used in connection with goods. Trademark use is established by applying the mark to the goods or the packaging for the goods. Trademark usage is not established merely by using the mark in advertising or promotional literature. However, such marks inevitably appear in promotional materials.
Service marks are marks used in connection with services. In contrast to a trademark, a service mark is established by using the mark in advertising the services.
Know Your Symbols
There are three symbols that may be used with trademarks and service marks: ®, TM and SM. An ® may be used next to the mark only if the mark is registered with the Federal Trademark and Patent Office. It is unlawful to use the ® if the mark is not registered.
The TM meaning “trademark,”or SM meaning “service mark,” may be used next to any mark at any time. It has no legal significance, but it does serve as notice to the public that the user of the mark considers it to be a trademark or service mark. Typically, the user first begins using either a TM or SM, substituting the ® after a federal registration is obtained.
File Correctly
Under current trademark law, the trademark or service mark may be filed using one of two bases; Use in Commerce and Intent to Use in Commerce. Use in Commerce states that a trademark is already being used to actively market or sell the applicable products/services. An Intent to Use basis states that an applicant “intends” to use the mark sometime in the future. Actual use in commerce must commence within a certain time after an Intent to Use application is filed in order to proceed with the filing. Lack of use will result in the application being abandoned.
The Intent to Use status allows companies to reserve marks for a period of time prior to actually using them. This is a benefit to companies who are actively naming their products or services but have not yet brought them to market.
Conducting a Search
If an agency client asks you to develop a new name for a product or service, you should offer a search of the proposed name or names to see if they are in use, or reserved, as a part of your fee. This positions your agency as a professional services firm.
There are several ways you may accomplish a trademark search. You could retain an attorney to do the search for you. The attorney will submit the names to a computer search, and you will receive a report showing if anyone is using or has reserved the name you have chosen. The report will also show you who is using or has reserved the name. This gives you some idea how aggressive to be in fighting for trademark rights in the chosen name.
For example, if you have a product called “Sunlite,” a dish detergent, and your search finds another “Sunlite” reserved for a beverage, you may consider the two products dissimilar enough to use the name. However, if you find a “Sunlite” name reserved for another detergent product and Procter & Gamble has already reserved the mark, you can bet they will litigate to keep the name.
An attorney will charge you a fee to complete the search and deliver the printout. In some cases this may be costly but it is increasingly important to protect names and slogans. Most clients will pay the freight if the long-term benefits of clear ownership can be explained to them.
Second Wind is also able to conduct a Federal/State Trademark Search for its members using several subscription databases. We provide a detailed report and analysis describing the search results, the availability of the marks, and full details on federal- and state-registered marks that could possibly be in conflict with your proposed marks. If you are interested in having Second Wind undertake a search for you, please call us for pricing information.
