In today’s challenging economic environment, businesses are looking for
ways to improve their competitive advantage. One important way is through
branding. Branding consists of sending a uniform message to consumers and
customers about the quality of goods and services being offered.
At the heart of any branding campaign or program is one or more
A trademark is any word, logo, symbol, device, or virtually
anything else that identifies the source or origin of goods and services. It can
be as simple and common as a word, and it can extend as far as sounds,
smells, and colors. Next time you buy some McDonalds French fries, look at
the bottom of the box. You will see a notice indicating that the design of the
box is a federally registered trademark.
• A common theme through a business
• Lets others know about what is being offered
by the trademark owner.
There are essentially two ways to encounter problems with the use of any
trademark. First, by failing to clear the trademark for potential
infringement, and second, by failing to take steps to register and enforce the
rights available to trademark owners.
Trademark rights accrue at common law. This means that before there
were any statutory schemes for registration of a trademark, courts found
enforceable trademark rights for the user of a trademark.
The first user of the trademark would prevail over a subsequent
user of another trademark that was deemed to be confusingly
similar to the original mark.
Registration of a trademark enhances the rights of the trademark
owner, but the general rule that the first to use a trademark prevails
is not overridden by trademark registration.
Given that trademark rights accrue at common law, before any new
trademark is adopted and used, a comprehensive search should be completed
to determine if there are any prior uses of an identical, similar, or otherwise
confusingly similar mark. If there are any such prior uses, then the
trademark should be abandoned, and another trademark adopted.
Caution should be used when naming a business. The standard for
reserving and obtaining a business entity name from a state agency is much
different than the standard for using a trademark in commerce. Anytime a
business name is also used to identify the source of goods and services,
which is very broad, the name is also a trademark. A business name may be
available through the applicable state agency, but the use of the mark in
commerce may constitute trademark infringement. There should be little
comfort in knowing a state agency has approved the name of a new business
entity, if the name has not also been cleared for use as a trademark.
Similarly, a domain name may also be a trademark, and the same process
should be followed.
Trademarks can develop significant economic value. One report indicated
that the Coca Cola trademark was valued between $65 and $85 billion. That
did not include the bottling plants, the recipe for the drink, or any other
physical assets. It was the value of the intangible intellectual property. In
addition to the number added to a balance sheet, trademarks can create
Consumers frequently choose one brand over another because
of the trademark. Competing products may be very similar, but
because of the goodwill of the known brand, a consumer will
frequently choose the better known product.
Trademarks may be protected by filing for and obtaining registration, and
by implementing a good trademark compliance program, particularly if the
trademark owner licenses the trademark to third parties. Among other
things, a trademark compliance program can minimize the risk of losing
valuable trademark rights.
When a trademark is used, it is important to display appropriate
trademark symbols, and to display them correctly. If a trademark owner fails
to correctly display the appropriate notice for a federally registered
trademark, no profits or damages may be recovered in any lawsuit for
trademark infringement, unless the defendant had actual notice of the
registration. Common law trademark symbols may also be used to support
the owner’s position that the term or other source indicator is being used as
Trademarks are an important means of helping a business paint a
picture of the consistency of the quality of goods and services being offered,
and how they are delivered. Avoiding potential infringement litigation and
protecting valuable trademark rights will help further the strategic
objectives of any business.
Trademark Rights & Benefits
»Trademark rights accrue at common law, which means that users of trade
marks have rights, regardless of whether federal or state registration is
obtained. This is both a benefit and a caution. It is a benefit,
because nothing more needs to be done beyond using the mark to acquire
some fundamental rights. It is a caution, because that means that other
users of trademarks also have rights. If you happen to be the junior or
subsequent user of a trademark, you may be infringing on the trademark
rights of others.
Trademark Infringement & Clearing Process
In order to avoid, or at least minimize the risk of infringement, no new
trademark should be adopted, or no trademark should be used on new
products or services without going through a clearance process. In
addition, if the mark is cleared for use and registration, consideration
should be given to registering the mark, either in the United States Patent
and Trademark Office, or in the applicable state. Here are the steps:
Knock out search. A knock out search is a quick and inexpensive way to
determine if the potential mark should be “knocked-out” of consideration
before spending money on a comprehensive search or developing goodwill
in a mark through use and advertising.
Comprehensive search. A comprehensive search consists of searching
all of the trademark records of the United States Patent and Trademark
Office, the state records for all fifty (50) states, common law databases
which are determined by the nature of the goods and services to be sold
under the prospective mark, domain names, websites, and business names.
Comprehensive searches require trained professionals who know what
and how to search.
After the search is completed, the search results should be reviewed and
analyzed by a trained professional and advice given on whether the mark
is available for use and for registration. It is critical to recognize that
simply because a business name or domain name has been cleared, does
not mean the same term may be used as a trademark without clearance
for use as a trademark.
Domain names. In today’s environment, a separate domain name
search should be conducted. If a reasonable domain name using the
applicable trademark is not available, consideration should be given to
abandoning the prospective mark, and adopting a new mark.
When you do a comprehensive search, and an appropriate domain name is available,
an application for registration should be filed. Although fundamental
trademark rights accrue at common law, there are significant benefits for
If the mark will be used exclusively within a specific state,
consideration should be given to filing for registration in that
state. State registration is less expensive, and takes less time
than federal registration.
If the mark will be used in interstate commerce, or across state
lines, consideration should be given to filing an application in
the United States Patent and Trademark Office.
There are two types of applications that may be filed in the United
States Patent and Trademark Office. One is an “actual use” application.
The other is “an intent to use” application. As the name suggests, an
intent to use application may be filed if the applicant intends to use the
mark in the future, but the mark is not yet being used in commerce. If
the intent to use application proceeds to registration, then the date of
filing of the intent to use application becomes the constructive date of
On the first use of a new trademark, and all subsequent instances
before federal registration, the ™ symbol may and should be used. As
soon as the mark is registered in the United States Patent and Trademark
Office, the registered trademark symbol ® should be used.
Use as a trademark
» Trademarks should be used exactly the same each time and in their
entirety, always be used as adjectives, and not as nouns, used consistently
for the same goods or services, and should be in a prominent font and
Questions & Contact
For more information about Trademarks and for assistance in further
research and registering with the State of Utah or Federal Government,
please contact Fluid’s friend in these matters:
John H. Rees | Attorney At Law
Callister Nebeker & McCullough
P: (801) 530 – 7388