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Types of Trademarks and Trademark Registrations

What is a trademark?

A trademark is anything that indicates source, sponsorship, affiliation or other business relationship of the goods or services. Start with the notion that an indicator must be perceived through one of the five senses. This includes taste, touch, smell, sight and sound. Some senses lend themselves to interaction with trademarks better than others, but all are capable of doing so.

Currently, the following have been registered as trademarks:

• Sight - Single words, word strings, slogans, logos, letters (e.g. initials), numbers, drawings/pictures, devices, product configurations, single colors, and multiple colors
• Sound - Chimes, many of the items listed under sight are also spoken
• Smell - Fragrance
• Taste - None known to the authors of this material
• Touch - Product configurations

The types of indicators that can function and be protected as trademarks are very much in development. The true test is whether "it" is capable of indicating a single source, sponsorship, affiliation or other business relationship, regardless of whether or not the exact entity(ies) is(are) known.

What is the difference between a trademark and a service mark?

Trademarks and service marks are distinct in whether the mark is used with goods or services. The manner of fixing the mark is of significance in seeking a federal registration. There is some difference on how the mark is associated with the goods or services. Goods commonly have labels, where services have no place to put a label. For nearly all other practical purposes trademarks and service marks are treated the same.

What are common law, state registered, and federally registered trademarks?

A common law trademark is a trademark that has not been registered with the state or the federal government. Common law rights arise upon use or recognition. Such trademarks are at a distinct disadvantage. See next question on this page: "What is the geographic scope of protection of a trademark?"

A state registered trademark is a trademark that has been registered at the state level.

A federally registered trademark has been registered with the federal government. To obtain a federal registration the applicant must use or intend to use the trademark in interstate commerce.

What is the geographic scope of protection of a trademark?

This is perhaps the single most important, but overlooked question in trademark law. There are three types of trademarks when considered in the context of geographic scope. They are:


1) Common law trademarks have a geographic scope limited
to the area of use or recognition, which could be as
small of an area as a couple of city blocks.

2) State trademark registrations have a geographic scope
of one state.

3) Federal trademark registrations encompass the country.

One, however, cannot acquire trademark rights where another has already acquired those rights. This is of critical importance to expanding the geographic scope of a company, whether it is your own or your competitor's company.

Consider if Company A has been using a trademark since before the dawn of mankind as a common law trademark. Assume the use has been limited to the northern half of a state. Company B wants to interfere with Company A's expansion plans. Company B could acquire trademark rights in the southern half of the state simply by filing a state trademark registration, precluding company A from expanding in the state. Company B might file a federal trademark registration, precluding Company A from expanding anywhere inside the country! Neither the state nor the federal registration would permit Company B to use the trademark in the northern half of the state, since Company A was there first.

About the Author:

N. Paul Friederichs, founder, started practice as a patent attorney in 1992 at a major Minneapolis, Minnesota law firm where he was the highest performing associate. In 1993, he started and developed Friederichs Law Firm with his father. Throughout this time Paul�s experience was heavily weighted toward litigation. He served such clients as Tonka Toys, American Harvest and Boston Medical.

He can be reached at http://www.angenehm.com/

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