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August 21, 2015
When to use them, how to get them
Most of the time I'm involved with patents but lately I've seen more and more clients where a trademark is a more appropriate method of protecting a clients intellectual property.
One situation is when a product has already been in the market place. Patent law says you can't patent an invention once it has been publicly disclosed or offered for sale.
Trademarks tend to be the opposite. When a product has been in the marketplace for some time the trademark is better established than if it had not been.
Another situation occurs when an invention can't be patented because it is obvious based on previous prior art. While, for example, you can't patent something for which a patent was granted and expired, you can trademark it.
There are two kinds of trademarks, unregistered and registered. The first is the easiest and least costly to use. Its also the most difficult to enforce. To establish a right to an unregistered trademark you simply need to put the symbol TM after the word or phrase you wish to protect.
The second type of trademark , the registered trademark designated by a ® is and more expensive to get but also more valuable.
In order to register a trademark you must establish that no one else making a similar product has already used that trademark.
And that issue is much more difficult than one might expect. In trying to get a trademark for a client we found that all variety's of the words "Snap-On" had been trademarked by the Snap On tools corporation. And just about any image that had two socks in it was owned by the Boston Red Socks.
You can trademark not only words and phrases but also images. We got into some very interesting problems in trying to trademark some images for a logo.
We are all aware of the large number of images available as clip art. Most are copyrighted and some require permission to use, but our big surprise was in finding that even clip art that is shown as free to use, is not free to use in a trademark. You need to carefully read the terms and conditions of using "free" clip art if you want it for a logo or trademark.
We ended up hiring a graphic artist to draft us a logo. But even that wasn't enough. The artist had to sign the rights to use the logo over to my client as it was automatically copyrighted for her unless she released it.
So use TM first and then consult an attorney if you want an ®. To help sort things out as to what you should do and when, just contact us, we can help.
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