Trademark Law Basics

By Marc Whitfield, Partner

What is a trademark?

A trademark is any word, name, symbol, device, or any combination, that is used to identify and distinguish the goods of one seller or provider from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of services, rather than goods. For simplicity’s sake, we generally use the term “trademark” or “mark” to broadly refer to both trademarks and service marks and we may often refer only to goods, without specifically including services in each instance.

Most successful entrepreneurs and businesspeople generally understand that establishing and maintaining a positive and uniquely recognizable identity for your goods and services is crucial to the long-term success of the business. This explains the importance of carefully choosing a strong trademark.

How do you acquire or create a trademark?

The most essential element is establishing ownership of a trademark or service mark is “priority use” of the specific mark in commerce. By “priority,” I mean that you have to be the first person to use the mark to identify the specific types of goods or services that you provide. Clearly, you could not reasonably expect to distinguish your goods or services if you choose to use a mark that someone else is already using to promote and sell similar goods or services. The mark must be able to distinguish your specific goods or services from similar goods or services of others and that generally requires that you be the first person to use that specific mark to promote the types of goods or services that you provide. Once you have selected a unique mark that no one else is using to promote or sell similar goods or services, you must then begin to actually use the mark in commerce to identify and promote your goods and services. For example, if you are the first person to market and sell KIROLI MEAT PIES in Louisiana, you would generally acquire exclusive trademark rights for KIROLI MEAT PIES within the State of Louisiana, but only with regard to the sale of meat pies and related food products. You could not reasonably expect to stop someone else from selling KIROLI TIRES in Louisiana since you are only selling KIROLI MEAT PIES, not KIROLI TIRES.

Proper use of the mark as a trademark.

To function as a valid trademark, the mark must be used to distinguish your goods from others. In short, you have to use a word, phrase or symbol to identify yourself as the unique source of the specific goods or services that you provide. For example, if you bury the phrase “one source for all your insurance needs” within a body of text on your website, the incidental use of that phrase would not properly function as a trademark to identify your services. However, if you take that same phrase and bold it so that it sticks out and prominently and appears, by itself, at the top of every webpage on your website, then you have begun to properly use this phrase as a trademark to identify your specific services to the public.