LEGAL
Trademark Law
A trademark is any word, slogan (``It's the Real Thing!"), name (Microsoft), or symbol (think of Apple Computer's logo) or device (things like the Pillsbury Doughboy) adopted and used by a manufacturer or merchant to identify his goods and to distinguish them from those manufactured or sold by others. Service marks are generally the same thing except they are employed by service providers rather than manufacturers or merchants.
Trademark law is a sub-part of the larger body of law called unfair competition. Trademark law is designed to protect businesses from others who would misappropriate the business's reputation or identity. (Please note that there are two uses of the word ``trademark". The broadest use of ``Trademark" refers to the area of law and practice of trademarks and protection of trademarks. The more narrow term is used to denote a particular trademark. We'll try to make it clear which use we are refering to when we use the term ``trademark" by capitalizing the former.)
When you are going to select a trademark and/or name for your business, remember that if your chosen name or trademark is being used by someone else, it could lead to a legal fight over who is entitled to the name or trademark. Also, you do not want to chose a name that is not unique in some way because you might not be able to keep others from using it once you have established your business (example: Good Computers). Go to an attorney or professional service and ask for a search of the public records to ensure that no other businesses are using the trademark or tradename you wish to use. This search should be done before you start investing time and money into advertising or building business contacts.
Types of trademarks:
- trademarks: a word, symbol or design used to identify and distinguish goods.
- service marks: a word or design used in association with the sale or advertising of services (not goods!) identifying those services and distinguishing them from the service of others.
- certification mark: a mark used to certify that goods or services meet certain standards of quality or regulatory compliance.
- collective mark: a mark used to identify members of an organization.
Trademark protection is supposed to do two things:
- Prevent Deception By allowing businesses to reserve names and trademarks, this is supposed to protect consumers from mistake, confusion, or deception as to the origin of goods or services. (For example, if there were no trademark or tradename protection there would be about fifty thousand companies called Microsoft all hawking word processing software, forty-nine thousand nine hundred and ninety-nine of which would be terrible programs.)
- Goodwill The other reason the law allows businesses to reserve names and identifying marks is to allow businesses owners to make investment into their business's goodwill without fear of others profiting from it.
In the United States, unlike most of the rest of the world, Trademark rights come into being upon use of the trademark. The first business to use a trademark or a tradename obtains protection against others who want to use that same name or logo in geographical areas where the first business operates. So regardless of whether or not you register your trademarks and tradenames, a business can obtain certain rights to exclusive use of a trademark or tradename solely from use. (Innocent mistake is no excuse in cases of infringement, so there is no ``oops" defense for businesses infringing.) But please note that once you start using a trademark, the Trademark rights that you acquire by using it are yours only so long as you continue to use the trademark--if you quit using the trademark, you may lose your rights. Trademark rights continue indefinately so long as the trademark is used.
Once you have used a tradename or trademark and it becomes recognizable to others, you must be vigilant about protecting it. If you do not defend your trademarks and tradenames immediately when others infringe on them, do not expect the court system to be very concerned about protecting your rights either. In general, if the courts help anyone, it is fools and saints; squabbling businesses get a decidedly unsympathetic hearing in courts, and inattentive businesses usually get even less. So be vigilant and be aggressive when protecting your trademarks and tradename.
But the rights that your business obtains through mere use can (and should!) be augmented by the rights obtained through federal registration of your business' tradename and trademark if your business will be engaged in interstate or foreign commerce, the name or logo is distinctive, and the name or logo is not going to cause consumer confusion between your business and its products and the products of another business with a similar name or logo. The federal registration extends the protection you automatically get due to your use of a name or logo across the country rather than limiting it to the particular geographical area in which you operate. Federal registration also provides significant advantages to you when it comes time to enforce your rights against others seeking to infringe upon your tradename or trademark.
Federal Registration:
In brief, the federal registration system works this way: The business owning the trademark files an application for federal registration of a mark based the prior actual use of the trademark or based on a ``bona fide" (true) intent to use the mark in interstate or foreign commerce. The filing date of the application becomes the date that the mark or name is first ``used" by the business (remember that trademark and tradename rights depend upon who used them first! Whoever used the trademark or tradename first, gets priority). The mark or name applied for by the business is not registered until the applying business submits proof of actual use of the tradename or trademark. This may seem strange to have two steps, but it is done for a reason. This way, businesses can ``reserve" a name or logo by filing an application before they spend a lot of money advertising that name or logo. Once all of the marketing research is over and the business decides to go with the logo or name, it can simply show that it is using the name and it has all of the rights to the logo or trademark. (There are also state registration systems which operate in a similar way, except that the application is based upon actual use, not an intent to use of the logo or name. Thus there is only one step in the procedure, unlike federal law. If you know that you are only going to operate in one or two states, it may be sensible to file your logo or tradename this way, rather than federally.)
Federal registrations last ten years, with extensions granted for successive ten-year terms if the trademark is still in use. But please note that during the first ten-year term, trademarks holders need to file evidence in between the fifth and sixth years to show that the trademark is still in use.
Licensing:
In the US, a trademark may be licensed to others, but the owner of the trademark has to control the nature and quality of the trademarked goods and/or services. Licensing without proper control over the product and services can result in the public buying goods which are not up to the standards expected by consumers, and this, in turn, is seen as a misleading of the public. In some cases, this is cause for the trademark owner to lose rights to the trademark.
Licensing a trademark can result in income from the licensee's use of the trademark (royalties). it can also make the trademark more widely known and recognized (and hence more valuable) if more people come to recognize the trademark and identify it with quality services or products. In general, the more a trademark is used, the better for the trademark's owner.
Any licensing agreement should include provisions covering: the license's exclusivity and term; the procedures for quality control; indemnification; defined commercial markets; accounting procedures for calculation for royalties; termination options of licensee and licensor; and assignment of rights under license.
As we noted earlier, both state laws and federal laws govern the use (and therefore) the licensing of trademarks. The federal law governing licensing is commonly called the Lanham Act.
Giving Notice of Trademark:
You know those cool little symbols, ®? That represents that the symbol, word, character, etc. is a trademark and that the Trademark rights are reserved to the owning party.
Enforcement and Legal Remedies for infringement:
A trademark is infringed (whether or not the trademark is registered), if a party not entitled to use the trademark uses (i) the same or a confusingly similar trademark; (ii) on the same or closely related products; (iii) in the same geographical area as that in which the trademark is used (or within an area of possible expansion).
Just like in patent suits, courts can offer trademark holders or owners relief from infringement. A court may order an infringer to stop using the trademark, destruction of the infringing products, or even award monetary damages suffered by the trademark owner (after a trial on the merits). But don't expect to make any money off of a suit like this; these cases usually only prevent your business from losing any more money due to infringement, they rarely produce revenue for a business suffering from infringement.
Back to United States Intellectual Property Table of Contents
NON-DISCLOSURE AGREEMENTS
Two different confidentiality agreements / non-disclosure agreements are offered, sold as a package.
1) External Contacts: This agreement is the one to use with contractors, vendors, consultants, potential employees, licensees and anyone else that will have access to your business. You can even have full-time employees sign this non-disclosure agreement, in addition to the employment contract.
2) Mutual Contacts: This is a "mutual" non-disclosure agreement, which stipulates that both parties (both you, and your contact) will not disclose proprietary information. This is used when talking to an "equal," like a potential partner, investor or even a competitor.
- protect your trade secrets, financial results and intellectual property from being revealed.
$29.99
