Trademarks Create Valuable Assets

By Gene Quinn
October 18, 2008

Earlier this month Activision filed a trademark registration for “Guitar Hero Modern Hits.”  Guitar Hero is the massively popular video game that allows you to try and keep up with the music and play like a legend.  According to Wired, 90% of children surveyed want Guitar Hero for Christmas.  So obviously it makes sense for Activision to file trademak applications to protect this mega-hit.  But trademarks are not only for those companies that are trying to dominate the world.  Trademarks can be a significant asset for any business to have, even small businesses.  In order to protect your business and develop valuable assets it is a good idea to apply for a trademark.

Filing a trademark application is an excellent step to take to protect your name, slogan or logo. It is, however, important to understand that not all trademarks are created equal. While every state allows you to obtain a trademark registration, federal trademark registration provides the greatest rights. This is because when you obtain a United States federal trademark your rights will exist throughout the country, and not in just one particular state or geographic locality.  With a state trademark you obtain rights to your immediate geographical area only.

For example, if you get a trademark in California and use the mark in commerce only in Newport Beach, California, and subsequently another party files for a federal registration on the same mark, you are prevented from using your mark outside of Newport Beach! Moreover, a state registration does not even entitle you to rights throughout the entire state. Notice in the previous example that I said that if someone were to obtain a federal registration on the same mark for which you had a California state registration you would only be able to use the mark in your geographic area, not throughout the state. So if you use the mark in commerce in Newport Beach, and someone acquires a federal registration, they can use the mark in San Diego, Los Angeles, San Francisco and everywhere in between.

Trademarks serve multiple purposes, but there are two primary purposes. First, trademarks identify and distinguish either the goods or services of one manufacturer or seller from goods or services manufactured or sold by others. Second, trademarks indicate the source of the goods or services. In short, a trademark is a brand name.

The first step to acquiring federal trademark rights requires that you either (1) start using the slogan, name or logo in commerce (i.e., some kind of commercial use) and then subsequently file a trademark application; or (2) file an intent to use application which will lock in your filing date but which does not require immediate use. The intent to use application is essentially a reservation of the mark for a limited period of time. You will eventually have to start using the mark, but if you are not yet using the mark in commerce this is the way to go.

With respect to actually filing a trademark application there are essentially two options. First, you can do it yourself. Second, you can hire an attorney. Up until September 15, 2008, you also could have used any one of the many online trademark services to prepare and file an application for you.  On September 15, 2008, the United States Patent & Trademark Office changed its internal rules and now these services are engaging in the unauthorized practice of law.  There are still many out there that claim to be able to file an application for you, and it seems that the Patent & Trademark Office has not yet taken any action to stop them. Still, filing a trademark application is not as easy as it might seem due to the fact that it can be difficult, if not impossible, to amend an application if you make a mistake at the time of filing. Indeed, in many situations when filing mistakes are made the cheapest solution will be to simply file a second application properly, but that creates a delay in acquiring rights. So my recommendation is to stay away from online trademark services offered by non-attorneys.

For more basic, tutorial information on trademarks please see:

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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