Trademarks Create Valuable Assets
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Written by Gene Quinn President & Founder of IPWatchdog, Inc. Patent Attorney, Reg. No. 44,294 Zies, Widerman & Malek E-mail | Blog | Twitter | LinkedIn Posted: Oct 18, 2008 @ 12:56 pm 
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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, but it should only be a matter of time before these entities are shut down. So my recommendation is to stay away from online trademark services altogether.
About the Author
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Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) Zies, Widerman & Malek B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center Send me an e-mail  |
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Known by many as “The IPWatchdog,” Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.
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