Florida Law Firm > Trademark Types, Rights and Searches
Trademark Types, Rights and Searches
There are three types of trademark searches that may be performed.
"Direct hit" searches examine the federal and state trademark registers for other marks that begin with the same letters or words.
"Common law" searches look for any prior use of your trademark (whether or not it was registered) by examining white and yellow-page telephone books, trade directories, product catalogs, and so on.
"Analytical" searches also look at registered marks (state and federal), but go a step farther by checking for all marks that sound like or look like your mark, including alternative spellings, homonyms, synonyms, anagrams, and any other marks that might cause customer confusion.
What About ™,SM,and ®?
Before registering a trademark, the company may claim ownership by using the symbol ™ next to the mark. Similarly, before registering a service mark, one may use the symbol SM in conjunction with the mark. These symbols have no legal effect, but they serve to warn others that the owners of these names consider them to be trademarks and claim ownership of them.
After a trademark or service mark has been registered with the PTO, you may use the symbol ®. Alternatives are permitted, such as "Registered in the U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." While these symbols are not required to be used by the product manufacturer or service provider, their use will bolster the company's arguments in the event of an infringement case.
Trademark Rights
Contrary to popular belief, trademarks do not have to be registered for the owner to gain rights. Simply being the first to use a unique trademark in the marketplace gives the business owner some protection. However, federal or state registration of a trademark can be a strong argument in a court proceeding when two parties have independently used the same or similar trademarks.
What rights are involved in registering a trademark? There are two: the right to register the mark and the exclusive right to use the mark. The Patent and Trademark Office (PTO) determines who has the right to register a trademark. Usually, the first person either to use a mark in commerce or to file an application with the PTO has the ultimate right to register that trademark.
Deciding who has the exclusive right to use the trademark is not necessarily so easy, particularly when two parties began to use the same or similar marks without knowledge of one another, and neither has registered the mark. The PTO cannot adjudicate this question and, in fact, cannot even give advice. The two parties in conflict must consult lawyers. Ultimately, the courts decide who has the right to use a given trademark. A court decision can result in a range of penalties, from a minor injunction against further use of the trademark, to a major punishment award of triple damages, plus court costs and attorney's fees.
Federal registration also confers the right to use the trademark for national and international commerce. State registration, as you might expect, offers protection only within the boundaries of that state.
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