Strength and value of US trademarks and service marks

A trademark or service mark is one or more words, symbols, slogans, taglines, characters, designs, colors, shapes or other devices used to identify the source of particular goods or services and distinguish them from the goods and services of others.

When grocery shoppers see GNC® on dietary supplements, for example, they expect that the goods are manufactured by General Nutrition Company and will be of a known quality. When consumers see RITE AID® in connection with retail drug store services, they expect that the services are affiliated with other drug stores using the same mark and that the quality of the services offered will be similar among them.

Trademarks symbolize the source of a particular product or service with a particular source, even if that source is unknown to the consumer. Trademarks help companies to build demand for their products and create customer loyalty, and well-recognized marks enable consumers to quickly identify products and make purchase decisions.

Because of the critical role trademark play in the marketplace, and their value, it is important for every company to try and protect its trademarks.

Trademarks and service marks are distinguished from trade names, which identify a business name or vocation.

For example, Target Corporation is a trade name. Of course, the same term can be used as a trade name, trademark, or service mark by the same entity. TARGET is the dominant portion of several trade names. TARGET is also a trademark when used on consumer products, and a service mark when used in connection with retail department stores and pharmacies. Only trademarks and service marks, however, can be registered with the US Patent and Trademark Office.

Strength of trademarks and service marks​

Before a trademark or service mark is adopted or an application for registration is filed with the US Patent and Trademark Office, it is recommended that a preliminary search be conducted of the Trademark Office records to determine if the chosen mark is available.

It is prudent to conduct a search before investing money and resources in developing a mark that may not be available and which may bring the threat of a lawsuit (eg, the mark may infringe the trademark rights of another).

Since there is no requirement in US trademark law to seek Federal registration, a preliminary/federal search does not reveal all marks that may be in use in the United States. The preliminary search will reveal only marks for which Federal registration has been sought; another party may have adopted the same or a similar mark for the same or related goods and services but may have never applied for a Federal registration of the mark.

If no obvious conflicts are disclosed in the preliminary search, a more comprehensive or full search can be performed that includes the trademark records of the individual US states and common law databases, including trade directories, internet domain names, and telephone directories.

Full searches are likely to reveal marks that may be in use but for which Federal registration was not sought. While there is no absolute certainty that a full search will reveal all potentially conflicting marks, the more extensive search is the best way to evaluate whether the chosen mark is clear for adoption or infringes the rights of a prior user.

Norm J Rich is a partner with Foley & Lardner LLP and a member of the firm's Trademark, Copyright & Advertising Practice Group. He can be reached at 202 945 6100 or by e-mail at aevpu@sbyrl.pbz​​