TRADEMARKS

Describes Wisconsin laws, how to research a trademark and how to register a trademark (Wisconsin and National).

Concept of “Ownership” of a Trademark

The concept of owning a trademark is different in trademark law, than in normal lay conversation.

            “There is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed…the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another’s product as his; and is not the subject of property except in connection with an existing business.”

            “Unlike a patent, a trademark right is not a right to gross or at large.”

            “There is no such thing as bare title to a word or to a symbol.”

            “Trademark registration by itself does not create underlying right to exclude, nor is a trademark created by registration.”

            Above are various case decisions.

Screening

            Registration of a trademark, especially a Wisconsin registration, does not mean you can legally prevent someone else from using the mark. The whole concept of a trademark is to create a source indicating significance in a trademark. That trademark can then be advertised to customers and clients.

            No other business should be able to use the trademark. If some other business can use the trademark, the advertising effort is wasted. If some other business can use the trademark, the customers and clients are confused as to which business is using the trademark.

            Descriptive marks like “PAIN CLINIC”, “DENTAL CLINIC” are not protectible.

            The Wisconsin State registration of a trademark is a filing system. A filing system means the State of Wisconsin does not have an employee decide whether the mark sent for registration is registerable, or not registerable, because the mark is descriptive.

            A State of Wisconsin registration does not give any help in a lawsuit to prevent competitors from using the mark. The State of Wisconsin registration is not evidence in support of whether the claimed mark actually serves as a trademark.

            We see any number of “cunning peasants” filing clouds of Wisconsin State Trademark Applications. The applications are the part of the cottage industry, to threaten other users and perhaps to sell whatever rights exist under the mark.

            A term that is descriptive can’t be considered a trademark, unless the owner of the mark can establish that a consumers has come to identify the descriptive mark, as an indication of source.

            Even if a descriptive mark did become known as a client’s trademark, an opposing party is allowed to use you client’s descriptive mark under the fair use defense of the Trademark Act. The Trademark Act says if if the mark is used “fairly and in good faith, only to describe the goods or services of such party”, that is a defense to any trademark suit. If the mark is descriptive, that is a defense.

            If the mark is descriptive of, and used fairly and in good faith, to describe the goods or services that are being provided by another party, like “Chiropractic Arts”, you can’t stop the other party’s use of the trademark. If the mark is descriptive of the consumers that the mark is directed to, the mark can’t be protected.

            A trademark “ACCIDENT AND INJURY TREATMENT CENTER” is not protectible. The mark describes the desired customers.

            “ACCIDENT AND PAIN CLINIC” is not protectible. It describes the services to be provided.

            Threats of enforcement of an unprotectible mark are the basis for an antitrust action for unfair competition. The action provides attorneys fees, and triple damages.

            We suggest that you, or your clients come up with such names that don’t say “ACCIDENT AND INDUSTRIAL INJURY CLINIC” and ‘ACCIDENT AND PAIN CLINIC”. They are not protectible marks. They are a waste of money, and the guarantee of a lawsuit.

Further Search to Clear Your Company Name

            Consider having a computer trademark clearance search on your proposed company name. The computer trademark search, while still a screening search, is more exhaustive than the search through the Trademark Register.

Specialized Clearing Searches

            A trademark lawyer would go beyond the preliminary screening searches described in this article. A specialized clearance search can be ordered. Clearance searches examine United States, Federal, State and common law trademarks.

            If you need a specialized clearance search, that search can be obtained through Thomson & Thomson. Thomson & Thomson’s address is 500 Victory Road, North Quincy, MA 02171-3145. The telephone number is 1-800-692-8833.     

Trademark

            A trademark is a name or design used in connection with the sale of goods or services to indicate their source and to assure the public of the good or services uniformity. We may not know that “Crest” and “Tide” are trademarks of Proctor & Gamble Company. We do know that we can expect a certain type of toothpaste, or laundry detergent, whenever we see these names.

            Trademark rights are different from patent rights, in that rights arise from the use of the mark. No rights can be obtained until there has been use of the mark in commerce.

            State and federal registration of marks are available. Each adds certain additional rights, primarily in the area of notice. The letters “TM” (for trademark) or “SM” (for service mark) can be and should be used with the mark. If Federal registration is obtained, the symbol ® is used instead.

State Trademark Registration

            Wisconsin registration is recommended if the mark will not be used outside Wisconsin.

            Filing a Wisconsin trademark registration application is a simple procedure.

Federal Trademark Registration

            A federal application is more involved and costs substantially more. An application for a Federal Trademark is filed with the United States Patent and Trademark Office.

            Federal registration is recommended if sales are to be made outside of Wisconsin. Wisconsin and Federal Trademark Registration are each effective for 10 years and each can be renewed an unlimited number of times.

            The trademark you chose should not be descriptive of the goods or services with which it will be used.

            The mark should be one which is not  being used for similar goods or services by another.

            If a large investment is being made in promoting a new product or a new service, with a certain name. A trademark search is required.

What is Needed to Prepare An Application

  1. Proprietor’s name and address.
  2. State of incorporation.
  3. Trademark to be registered, exactly as you want it to be registered.
  4. What type of labels do you use for both bulk and retail size packaging, used in sales, on which you have used the mark.
  5. Date of first sale of your product with the mark on it within the State of Wisconsin.
  6. Date of first use of the mark on your product sold anywhere outside of the State of Wisconsin.
  7. In what states or countries have you sold your product or other products under the mark,
  8. How can you prove the dates and places where your product was sold in 5, 6, and 7? Do you have any invoices to confirm the dates and places where your product was first sold  using the mark?
  9. Has the form of the trademark changed since adoption? If so, what was the change?
  10. Did you originate the mark or was the mark acquired from someone else?
  11. Name of the member of the firm or officer of corporation who will sign the application for registration, and his or her title.

A trademark is a mark that appears on the goods or on the packaging of the goods. It is not a

trademark use if the mark just appears on the catalog.

Samples would be needed of each label, packaging, wrapping, boxes, or other items associated

with the sale of the product, showing your use of the trademark.

            Advertising material sent out to customers that explains what products are being sold under the mark should also be included.

About the Author

Joe Recka received his Doctor of Law degree in 1968 from the University of Illinois. Along with that he has obtained his Bachelors and Masters Degrees. He has been with Recka Associates law firm since 1973. Outside of practicing law Joe is a distinguished marksman. Joe was the 524th civilian to earn the Distinguished Rifleman Badge since it was originated in 1884. Joe practices in the areas of Personal Injury, Bankruptcy, Family and Divorce, Patents and Trademarks along with Wills and Business law. Email him at  Recka@reckaassociates.com This e-mail address is being protected from spambots. You need JavaScript enabled to view it .