A trademark is a design, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The law pertaining to these two kinds of marks is nearly indistinguishable.
Perhaps the best definition of what a trademark is used for was provided by the United States Supreme Court in 1942, which stated that “a trademark is a merchandising shortcut which induces a purchaser to select what he wants, or what he has been led to believe he wants.” A trademark is a word, phrase, symbol, or design, or a combination of those items, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” often are used interchangeably to refer to both trademarks and service marks.
Rights to a trademark arise when a trademark is used or an application to register is made and the applicant intends to use the mark. A trademark gives the owner exclusive use of the trademark as long as it is used to identify goods or services. As is the case with copyrights, federal registration is not necessary for a trademark to be protected. A trademark is good from the first time a product is used in interstate commerce. A mark may lose its trademark significance if it becomes associated with a generic name. For example, the terms “nylon” and “escalator” were trademarks that became generic. However, there are a number of advantages to federal registration. A trademark may be registered with either the United States Patent and Trademark Office or the Florida Secretary of State. Registration in one office does not register the trademark in the other office.
Anyone considering adopting a trademark first should have an attorney conduct a trademark search of both state and federal registers to discover if there are already any similar trademarks. If there are, it is best to pick a different trademark. It is wise to avoid the possibility that someone with a similar trademark files suit for infringement. Trademark litigation can be expensive. Once a person has adopted a trademark, he or she must continue to use it. Trademark protection is lost after two consecutive years of non-use.
FEDERAL TRADEMARK REGISTRATIONS
As previously mentioned, federal registration of a trademark is not required; however, there are two basic benefits of registering. First, the owner of a federal trademark registration is presumed to be the owner of the trademark. Second, the owner of a federal trademark registration is entitled to use the trademark nationwide. An application for federal trademark registration goes through two stages. First, the application must be accepted. Second, once the application has been accepted, the process to determine trademark registration begins. An application to register a trademark must be filed in the name of the owner. The owner can be an individual, partnership, or corporation. An owner who already has begun using a trademark may file an application based on that use, and someone who has not yet used the trademark may make an application based on an intention to use the trademark. Use of a trademark in promotion or advertising before the trademark is used with the products or goods does not qualify as use. If an owner files an application based on intent to use the trademark, she or he must use the trademark and submit proof of this use before the trademark will be registered.
The application consists of a completed application form, a drawing of the mark, and a filing fee. There is a separate filing fee for each class of goods or services listed in the application. The Patent and Trademark Office maintains a list of over 40 class categories, from furniture to clothing to chemicals. If the application is based on the use of the trademark, the application must include three examples per class showing actual use of the trademark. A separate application must be filed for each trademark a person wishes to register. The applicant must be careful when identifying goods and services, because an application may not be amended later to add goods or services not within the scope of the original identification.
After an application is filed, it is reviewed to determine if it meets the minimum requirements. If it does, the application is given a serial number and the applicant is sent a receipt. If minimum requirements are not met, the application and the fee are returned to the applicant. After an application is accepted, an examining patent and trademark attorney reviews the application to determine whether the trademark should be registered. If the attorney decides that the trademark should not be registered, a letter is sent to the applicant stating the grounds for refusal. The applicant must respond with objections within six months or the application will be abandoned. If the applicant’s response does not overcome the attorney’s objections, a final refusal will be issued. A common reason for refusing to register a trademark is the likelihood of confusion between the applicant’s trademark and a trademark that already has been registered.
If there are no objections to the application or the objections have been overcome, the attorney will approve the trademark for publication in the Official/Gazette, a weekly publication of the Patent and Trademark Office. Any party who believes that it may be harmed by registration of the trademark has 30 days to file an opposition to the trademark, which is heard before the Trademark Trial and Appeal Board.
If no oppositions are raised, the application continues in the registration process. The next step depends on whether the application is based on actual use of the trademark or intent to use the trademark. If the application is based on the actual use of the mark, the Patent and Trademark Office registers the mark and issues a registration certificate.
If the application is based on the party’s intent to use the trademark, the Patent and Trademark Office issues a Notice of Allowance. The applicant has six months from the date of the notice either to use the trademark and send to the Office a Statement of Use with three samples of use per class, or to request an extension of time. If the Statement of Use is filed and approved, the Patent and Trademark Office then issues a registration certificate. There is an additional fee per class for these filings.
As mentioned, before a person applies for federal registration of a trademark, a search should be done to determine whether there are any conflicting trademarks. The application fee is not refunded if a conflicting trademark is found. Also, one would not want to spend resources on a trademark that is not available. The term of a federal trademark registration is ten years, with ten-year renewal terms.
Besides registering a trademark claim, a person also may give notice to the public that trademark rights are claimed. The “TM” symbol or the “SM” symbol may be used by anyone to notify the public of the claim. Use of the registration symbol ® is permitted only when the trademark has been registered with the Patent and Trademark Office.
STATE TRADEMARK REGISTRATIONS
A trademark also may be registered with the Florida Secretary of State’s Office. A state trademark registration is not equivalent to federal registration. A trademark that is federally registered does not need to be registered with a state because federal registration gives the owner the rights to that trademark nationally. However, a party who has not registered a trademark with the United States Patent and Trademark Office may wish to file the trademark with Florida. For example, if a person is operating a small business in Florida and never intends to expand the business, he or she may consider registering the trademark with the Secretary of State to protect his or her interests only in the state of Florida.
A trademark registration in Florida takes less time and money than the federal registration. A party must submit an application to the state with the appropriate filing fee. State registration only provides protection in that state, so a person can have a trademark registered with Florida and another person could legally use the same trademark in Georgia. A trademarks registered in Florida is protected as long as the trademark continues to be used. The initial term of a trademark registration is ten years with subsequent renewal periods. Registering an assumed name or a corporate name in Florida is not trademark registration and does not provide trademark protection.
TRADE SECRET LAW
Florida’s Uniform Trade Secrets Act provides protection for a broad category of sensitive business information. The Act provides both injunctive relief and damages for misappropriation of a trade secret. The Act defines a “trade secret” as information including, but not limited to, financial, technical or non-technical data, formulas, patterns, compilations, programs, devices, methods, techniques, drawings, processes, or lists of actual or potential customers or suppliers, that derive value from not being generally known, and about which some effort has been made to keep the information secret. Note that the definition of a trade secret is not limited to documents or information entered into a computer; trade secrets can be information retained only in a person’s head. Thus, a trade secret can be passed on simply by a key employee leaving to work for a competitor. Note also that the definition requires the business to take steps to keep the information secret; an employer cannot claim misappropriation of a trade secret if the employer never treated the information as secret.
An attorney experienced in this area can advise on the steps appropriate for a particular business to take to protect trade secrets. By maintaining a strict policy regarding the identification, communication, and use of trade secrets, a business generally can avoid problems before they start. Some practical means by which a company can help avoid misappropriation of its secrets include reminding employees about confidential communications before and after the discussion of a trade secret, asking employees to sign confidentiality agreements, and denoting sensitive communications with the word “secret,” or “confidential.”
