Trademarks are words, symbols, names, devices or combinations of these
that are used in conjunction with goods or services (referred to as a service mark for
services) to identify the source and quality of those goods or services. In certain
cases, color and non-functional characteristics of a product can serve as a trademark
or service mark. Trademark or service mark rights only arise through use, such as by
affixing the trademark to the goods or using the service mark in conjunction with the
service. Failure to properly use the trademark or service mark in conjunction with the
goods or services can result in loss of trademark rights.
The Patent and Trademark Office ("PTO") is the federal agency responsible
for registering trademarks. To qualify for federal registration, the trademark or service
mark must be used in or affect interstate or foreign commerce. State registration is
available for purely intrastate or local uses of a mark. If the mark is not yet in use but
interstate or foreign use is anticipated, the PTO provides an intent-to-use procedure to
"hold" the mark while use is initiated. Federal registration provides constructive
nation-wide notice that the registrant is using the mark, serves as evidence of the
exclusive right to use the mark and allows the owner to enjoin subsequent use of a
confusingly similar mark. After registration, which is good for ten years plus renewals,
the registered trademark symbol ® should be used. Unregistered marks can, and
generally should, use the TM or SM symbols to signify that the owner of the mark
asserts certain rights to that mark.
With regard to first use, the rights that arise from first use are generally
somewhat geographically limited to the extent of actual use of the trademark. As an
example, a person who uses a trademark in CA, AZ, NM and NV, would generally
have a right to use the trademark in that geographical area and, to some extent, in the
geographical area that is the natural extension of the use area (for example UT or TX).
However, a person who starts using the trademark in a different geographical area,
such as FL, GA and AL, would acquire rights to those areas independent of the first
person and, to some extent, in areas closely related (i.e., SC). If someone files an
Intent-to-Use ("ITU") application with the PTO, their rights will prevail over another
person even if that person used it before the ITU applicant started using the trademark
(assuming the ITU applicant filed the application prior to the other person's first use).
The ITU application in effect reserves your rights to the name as a trademark.
A federally registered trademark puts all others on notice that you are using
the trademark and provides constructive use of the trademark in all 50 states,
regardless of where your actual use is. Therefore, in the example above, if the person
first using the name in the Southwest had registered the trademark, the second person
would be infringing by using the same name in the Southeast. Even if they were not
"using" it first, but had filed an ITU application, they could prevent the second person
from using the name once the trademark was registered (i.e., after actual use). For a
person or company that cannot be everywhere at once, a federal trademark or ITU
application provides the territorial benefit of actually using the name in all 50 states at
the same time. To the extent someone uses a name before an application is filed
(whether an "in-use" or ITU application), however, they maintain a right to continued
use of that name in their geographical area.