Trademarks

"A mark is a sign or a symbol which enables its owner to distinguish his goods or services from the same or similar goods or services of another. Registration of the mark protects its use on any papers and materials relating to the registrant's business." World Trademark Law and Practice, Matthew Bender & Co., Inc., Ethan Horwitz, New York, NY (1998)

All trademark rights derive from common law and the act of using that mark. Before filing for a trademark you should have Greenberg & Lieberman perform a search of all federal and state registrations to see if your mark has already been registered. Additionally, you should have us do a common law search in order to attempt to find out if someone has been using your mark who has not filed for a registration. The Patent and Trademark office will award you a federal trademark registration if there is no other mark which has been federally registered which is the same or so similar that it would be confusing to the public. Two marks which are exactly the same, but which are in different classes of unrelated goods and services, will not be considered to be confusing to the public. The exception to that rule is that some marks have become so well known that they are deemed famous -- and then no other entity may use the mark even if the other entity is in an area of business unrelated to the entity owning the famous mark.

This leaves the question, "Why do a state or common law search?" The answer is that an entity could be registered on the state level which would not permit you to use your mark in that state, or an entity could be using a mark unregistered, nationally, giving them the right to cancel your federal mark so long as they find out about it before you file your letter of incontestability at the five year mark.

Once you have completed a good search for your mark, you should file for a registration. You may register federally if you are using or intend to use your mark in interstate commerce. Otherwise you may only file in the state where you are using the mark. Registration will give you priority rights in your mark as of the day of registration, put all others on 'notice' that this is your mark, give you statutory damages against those who infringe on your mark, and allow you to secure your rights to that mark against all competitors.

Foreign trademark applications are filed as Community trademarks. This trademark application will give you priority in all countries who are members of that treaty.

Once you have obtained a federal trademark registration you no longer have to put just " TM " or " SM " next to your mark. Instead you may now use the encircled ? . You must maintain your mark, protect it from all infringers, pay the upkeep fees, and show use every ten (10) years.