Trademarks, Service Marks, and Trade Names

Trademarks, service marks, and trade names may be a source of hidden value in your business. These valuable assets represent an important part of your business's public image, and it is imperative that you identify and protect your business's intellectual property. Nevertheless, many businesses overlook these assets and fail to protect them believing that they are the sole province of "big business." This section provides information that will help you determine whether registration of a trademark, service mark, or trade name is an appropriate and helpful solution to your business needs.

What are Trademarks, Service Marks, and Trade Names?

Trademarks, service marks and trade names ("marks") are words, names, phrases, or symbols (or any combination of those elements), that a business uses (a) to identify its goods, services, or business, and (b) to distinguish those from the goods, services or business of others. Examples of marks include words such as "Kleenex" tissue, slogans such as Nike's "Just do it", and devices such as the curved plastic Coca-Cola bottle.

Marks add value to your business - they may be a source of "goodwill" because of public recognition of the mark. Marks may also be sold or licensed to others for a fee. When it comes time to sell the business, properly registered and protected marks can legitimately increase the selling price of the business.

Why is it Important that I Register My Business's Marks?

While you are not required to register mark, there are several advantages in doing so that can both protect and add value to your business. Your business' intellectual property is protected under the law like any other property interest. Registration of your mark provides notice to the public that you own the mark, and that you claim an exclusive right to use the mark in connection with the goods, services, or business listed in your registration.

Registration puts others on notice that their use of your mark (or one similar to it that is likely to cause confusion among customers) may land them in court to defend an infringement action. Those who use any type of mark have a duty to make sure that the mark is not an infringement of another's intellectual property rights. Conflicts of ownership are generally handled by the courts, and proof of registration will serve as powerful evidence of your right to use the mark.

What Types of Registration are Available?

Marks may be registered at either the state or federal level. Determining whether to register at the state or federal level requires you to consider various issues, including the scope of use for the mark as well as the potential costs of registration. If you will use your mark only within a particular state, then federal registration may not be available to you. However, considering the nature of the modern economy, very few marks will not be eligible for registration within the U.S. Patent and Trademark Office due to lack of interstate use.

Registration at the state level provides protection against another's use of your mark within the state of registration only, and state registration is relatively inexpensive. Registration at the federal level offers protection of your mark throughout the United States, but the fees and costs associated with federal trademark registration are significantly higher than those for state registration. Trade names may not be registered at the federal level.

To register a mark in Alabama, you must be currently using the mark. Conversely, an application for federal trademark registration may be submitted based upon a "bona fide intent to use" the mark, and an applicant must simply submit a sworn statement that it has a "bona fide intention to use the mark in commerce." However, actual use of the mark must occur prior to final registration of the mark.

How Much Does Registration of Trademarks, Service Marks and Trade Names Cost?

Fees to submit an application for federal registration are $335.00 for each classification in which you wish to register your mark. Compare that with the filing fees of $30.00 required for submitting an application for registration in Alabama. Of course, there may be additional costs associated with registration besides the application fee, depending on the nature of the mark, the particular needs of the business, and the availability of the required drawings and specimens of the mark needed for the registration application.

Information provided by Tanner and Guin, LLC, Counselors at Law