What is a Trademark

This article has been provided by Jeff Jacobson, JD, LLM (Parmenter O'Toole, Muskegon).  If you have any questions related to this topic, a link to their website has been included below.  Jeff has given 3 Degrees Connect™ Women's network permission to publish this article.  Stay tune to more "expert" articles of this nature in the future.

What is a Trademark?

Trademarks and service marks can consist of names, logos, phrases, colors, sounds, packaging, and even building designs. These items are trademarks if they tend to designate the source of the goods or services sold. However, trademarks can not merely describe the good or service sold. For example, if you sell pens, you can not have a trademark for the name “Pen Company”. The protection provided by a trademark gives you the right to limit the use of marks that are likely to confuse customers as to the source of the goods or services. This means that you can limit the use of a mark that is similar to your mark.

Trademarks are created by use of the mark, and not by registration. This means that you must be using the mark in the sale of goods or services in order to claim rights to a trademark. The first to use the mark has superior rights to such mark. There are advantages for registered trademarks, and you may get superior rights by applying for registration before you start using the mark.

What are the Advantages to Registering a Trademark?


The legal advantages of registration are as follows:

• Constructive notice to the public of your claim of ownership of the mark. In other words, the public is deemed to be on notice of your claim to the right to use of the trademark and exclude others from use;
• Once the mark is registered, you are presumed to be the owner of the mark, and that you have the exclusive right to use the mark nationwide in connection with the goods and services listed in the trademark registration. This means that if your right to use the mark is challenged, a court will require the party challenging you to prove that you are not the rightful owner;
• Triple damages for intentional infringement and attorney fees for clear intentional violations;
• The ability to bring file a lawsuit concerning the trademark in federal court;
• Superior rights to a domain name or similar domain names; and
• The mark will become incontestable (i.e. no one can challenge your right to the mark) after it is registered for 5 years.

The business advantages are as follows:

• People associate a registration with value in a mark;
• People respond better to a demand letter to stop using the mark when the mark is registered;
• It deters people from using your mark or something similar; and
• It can help with marketing your brand (people recognize the ® symbol, and it makes the goods or services associated with the registered mark seem special or better than a competitors goods or services not using a registered mark).

This article was written by Jeff Jacobson, JD, LLM of Parmenter O'Toole
Jeff handles a broad range of matters related to business law, e-commerce, and intellectual property law including all facets of trademark registration and protection and registering copyrights.

Parmenter O'Toole
601 Terrace Street

Muskegon, MI 49440

Jeff Jacobson, JD, LLM