A trademark is used to identify:
- A product;
- The source of the product; and
- The manufacturer or merchant.
A trademark may be:
- A word;
- A phrase;
- A logo; or
- Another symbol.
Trademarks are typically used to distinguish one product and manufacturer from another product or manufacturer.
Prior to registering a trademark, it is important for an individual to run a trademark search in order to determine whether or not another business or entity is already using their chosen name. An individual would not want to create a business name, brochures, and other advertising items only to be forced to change their business name at a later date.
What are Common Types of Trademarks?
There are numerous different types of trademarks, including:
- Service marks: Rather than promoting a product, the service mark promote a particular type of service;
- Trade dress: A product may be known for its special packaging, or trade dress;
- Collective marks: A collective mark is a symbol, word, or phrase used to identify:
- a group;
- an organization or association; and
- the services, products, or members of the group; and
- Certification marks: A certification mark is a symbol or name used to guarantee the quality of a service or product.
What is a Certification Mark?
A certification mark is something that is used in connection with goods or services. It is used to indicate that the product originated in a particular region or that it is:
- Of a particular:
- nature;
- quality; or
- characteristic; or
- That it was produced by a member of a particular organization, typically a labor union.
Why Would I Use a Certification Mark?
Certification marks are used to certify a characteristic of a good or service which is significant to consumers. Certification marks are important because they help consumers avoid confusion.
How is a Certification Mark Different from a Trademark?
Certification marks share a distinctive feature with collective marks. This is that the owner of the mark cannot be the producer or provider of the services or products with which the mark is used.
With a trademark or a service mark, any use of that mark by anyone other than the owner is severely restricted. In addition, if an individual engages in actual production or marketing of the goods or services, it may be grounds for cancellation of the certification mark.
What is a Collective Mark?
Collective marks indicate that goods or services are produced by members of a collective group or may simply indicate membership in a certain group. There are two categories of collective marks:
- Collective trade or service marks: These are traditional marks that do indicate origin. They are, however, not as traditional in the sense that ownership of the mark is vested not in the producer or provider but in a group of which each producer or provider is a member; and
- Collective membership marks: These are completely nontraditional since they do not serve any origination function. They are only used to indicate membership.
Can You have a Certification Mark and a Collective Mark?
Yes, an individual may have a certification mark and a collective mark. These marks may become coextensive when membership in a group is founded upon or relates in some way to particular standards that are relevant to quality or regional origin.
For example, a group of wine producers who base their membership requirements on regional location may obtain a collective mark that indicates association with the group. Membership in this type of group inherently involves an identification or regional association.
The mark the wine possesses will act as both a collective mark and a certification mark.
Are there Similar Restrictions on Collective Marks as with Certification Marks?
Unlike a certification mark, there is no bar against use by the owner. For example, a group can register its mark for use by its members but it may also apply the mark to:
- Stationary;
- Publications; or
- News releases.
May I Deny the Use of my Certification Mark by Anyone Else?
The owner of a certification mark cannot deny the use of the mark to any entity that maintains the characteristics which the mark certifies. Discrimination can be grounds for cancellation.
Does Ownership of a Certification Mark Provide Me with Exclusive Rights?
The ownership of a certification mark does not provide what are typically thought of as exclusive rights. The rights are required to be available to all.
Certification marks, however, are subject to all other requirements of trademark laws, including the distinctiveness requirement.
Can I Own Both a Certification Mark and a Trademark?
Yes, an individual can own both a certification mark and a trademark. However, these cannot be identical.
To the extent that the marks are similar, they are required to be distinguishable so that a consumer is not deceived into believing that a product sold under trademark law is somehow of the quality that the certification indicates. For example, the mark of Good Housekeeping indicates the origin of a particular magazine.
However, the mark Good Housekeeping Seal of Approval indicates that a particular product or service meets the standards which are set by the owner of that mark.
What is a Trademark Search?
Prior to deciding to use a particular trademark or name, an individual should conduct a trademark search to determine whether a similar trademark is already in existence. If an individual attempts to use a trademark which is the same as or similar to another individual’s registered trademark, they may be held liable for damages as well as the registered owner’s attorney’s fees.
In general, a court will presume that an unregistered trademark owner was aware of the registered trademark, even if they were not. A trademark name or brand should be searched adequately prior to filing an application with the United States Patent and Trademark Office (USPTO) in order to determine whether a trademark is already being used by another individual or entity.
The failure to conduct a proper trademark search may result in being forced to change a name. Trademark searches may be conducted by using the following methods:
- An individual conducting their own search of the trademarks that are registered in the U.S. Patent and Trademark Office website;
- Conducting an internet based search to determine if the trademark name is already in use;
- Using a fee-based trademark agency which utilizes trademark databases for similar trademarks, for example, Thomson’s SAEGIS;
- Conducting a search of the trademark database in the individual’s state in addition to federally registered trademarks on the USPTO’s website; and
- Working with a lawyer who can help search for available and unavailable trademarks.
Should I Consult a Lawyer about my Trademark Issue?
The regulations and deadlines for trademark registration are strict and detailed. It may be helpful to have the assistance of a trademark lawyer who will be familiar with all of the deadlines and can assist you in fulfilling all the requirements.
Your lawyer will also be able to conduct on-going research to make certain no other individuals or entities are using or diluting your trademark without your permission. In addition, if you have any issues related to trademark dilution or infringement, your lawyer can assist you with the difficult strict procedural requirements that must be met during litigation.
Having a lawyer on your trademark issue case will help ensure your case is properly present and will increase your chances of prevailing in court.
