Posts tagged ‘trademarks’

FAQ: Trademarks and Service Marks for Not-for-Profit

What Is a Trademark or Service Mark?

The terms “trademark” and “service mark” refer to words, designs or logos that are used to indicate the origin or source of goods or services. 

There is no difference in the legal protections afforded trademarks versus service marks. The distinction is only with respect to what they identify. 

When used to identify a tangible product (such as jewelry or glassware), the word, design or logo is considered a “trademark.” 

When used to identify services (such as charitable services or educational services), the more appropriate term is “service mark.” 

“Trademark” also may be used broadly to identify both types of marks. For example, we refer to “trademark rights” and the “Trademark Office.”

What Is a Common Law Mark versus a Registered Mark?

In the United States, registration is not a prerequisite for using a mark or protecting a mark against infringement. Trademark rights can accrue simply through actual use of the mark in commerce, although there are significant benefits to registering a mark (see below). Those marks that are not registered but nonetheless are eligible for protection are called common law trademarks or service marks. 

We’ve Discovered Another Entity Using A Similar Name, Who Owns The Trademark?

The determination of whether a trademark is being infringed can be quite fact specific and will often require the advice of trademark counsel. 

Broadly speaking, however, the entity that first uses a mark in connection with a particular good or service has trademark rights that supersede the rights of later users of a similar mark for the same or related goods or services. In other words, the mere fact that another entity is using a similar or identical name does not necessarily mean that there is  a trademark conflict. Highly similar marks and even identical marks can often coexist peacefully so long as they are used on unrelated goods. 

Thus, in determining whether there is a true trademark conflict, one must consider not only whether the marks themselves are similar, but also whether the respective goods or services on which the marks are used are similar or otherwise related.

If your trademark counsel concludes that a genuine conflict exists, then the prescribed course of action will depend on which entity is found to have used the mark first. 

Copyright 2005 Pro Bono Partnership

More info at http://www.probonopartnership.org/publications/trademark.htm 

February 28, 2008 at 8:31 pm 1 comment


Categories