!#5: At The Beach - A Primer On The choice And Clearance Of Trademarks

!±8± At The Beach - A Primer On The choice And Clearance Of Trademarks

Introduction:

Surfboards, swim fins, wetsuits, t-shirts, swimsuits, sunglasses, sunscreen, bottled water, sandals, umbrellas, towels, volleyballs, ice chests........ Sounds like an additional one summer day at the beach! To the savvy, business entrepreneur, however, these beach accessories/necessities are the breeding ground for industrial exploitation. Not far behind in this consumer petri dish of sand and capitalism is the need to opt a trademark by which the item exploited will be known, e.g., Hobie® surfboards, O'Neill® wetsuits, Oakley® sunglasses, Baywatch® wristwatches, Mikasa® volleyballs, and Coppertone® sunscreen and tanning lotions. This record will highlight some celebrated trademarks in the sun, sand & surf and will briefly address the legal and business issues with respect to the selection, clearance and registration of such trademarks.

Trademarks Defined

A trademark (or mark) is defined as any word, symbol, slogan, or device (such as a design), or a aggregate of them, used by a maker or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. Coppertone® and Speedo® are perfect examples of 'word' marks. "Tan Don'T Burn" is an example of a 'slogan' mark. A logo or design such as the celebrated Coppertone girl and the dog is an example of a 'design' mark. An example of a service mark is Espn® for the "entertainment services, reporting and sports programming services rendered straight through the medium of television." Such a service mark as Espn® can also be exploited and serve as a trademark (i.e., for clothes (shirts, hats, sweaters, vests); prerecorded videotapes; beach bags, beach towels, etc.). In the U.S., trademark ownership are acquired straight through use (e.g., by selling or transporting your product in manufactures with the mark attached or on a label). In addition, under clear circumstances "color" can be a trademark. Examples face the surf/beach manufactures are the color "pink" for fiberglass insulation and "green" for dry cleaning pads.

Selection And Clearance

The option of a trademark is the first step that a merchant undertakes to originate an identity for his/her surfboard or swimsuit, etc. The clearance of a trademark is the process of determining whether or not the trademark is available and is not being used by man else as a trademark. This clearance process cannot be overemphasized in its importance. Ignoring this vital step can lead to a multitude of problems and expense. In the clearance of a trademark, a two-step process is suggested. The first step is to escort an on-line computer trademark hunt of the mark. This on-line hunt is additional clarified by identifying the goods sought to be used or sold as trademarks are categorized by classification. In the United States, the federal government has adopted the International Classification system. Toys, sporting goods, volleyballs swim fins, bodyboards, and surfboards are in Class #28. Swimsuits and beach apparel and clothing are in Class #25. Backpacks, beach bags and gear bags are in Class #18. Posters, magazines, books, trading cards, and other printed matter and publications are in Class #16. Videotapes, audiotapes, video game software (including downloadable software over a global computer network), surfing and skateboard helmets are in Class #9. Therefore, if you are planning to sell surfboards, apparel and gear bags, then you will want to escort an on-line hunt of Classes # 28, 25 and 18. The on-line hunt is often called a "knock-out" search. This is because the on-line hunt is a quick and relatively inexpensive way to settle if the mark is already being used. These on-line searches are often available at social libraries, industrial hunt firms and law firms.

If your mark appears free of conflicts after conducting an on-line search, the next level of hunt is the full search, which is obtained from industrial hunt firms like Thomson Compumark and Corsearch. The full hunt will hunt the federal database of trademarks at the Patent and Trademark Office, State trademark registrations, coarse law sources such as phone directories and Dun & Bradstreet listings, plus internet domain name registrations. If your mark still appears clear of conflicts after a full search, then you can be fairly clear that you can adopt and start using your mark. Caveat: These searches are not guarantees of the absence of conflicting marks, but they do allow a merchant to make a more informed decision in the clearance of a trademark.

Federal Trademark Registration

To collect maximum protection, it is best to register your trademark or service mark. In the U.S., your many ownership can be obtained with a federal trademark registration. If you are only conducting business within one state, e.g., California, it is possible to register your mark with the California Secretary of State. However, if it is your intent to do business over state lines or in foreign manufactures (or if you are already doing business over state lines or in foreign commerce), then the thrifty thing to do is to file for a federal trademark application with the U.S. Patent and Trademark Office placed in Alexandria, Virginia.

An application for registration of a trademark must be filed in the name of the owner of the mark. The applicant must submit: (a) a written application; (b) a drawing of the mark; (c) the required filing fee (which is 5 per mark per class at this time). The applicant will also incur attorneys fees, typically a fixed fee, should an attorney be hired to file the application(s). Trademarks registered with the Federal Government, as stated previously, are categorized by a classification principles which correspond to the type of goods sought to be registered. For instance, Morey® and Morey Boogie® for bodyboards, Churchhill® swim fins and Mikasa® volleyballs all are in Class #28. The Espn® service mark is in Class #41; Quiksilver®, Hang Ten® and Ocean Pacific® for clothing are in Class #25; Billabong® and Body Glove® wetsuits are also in Class #25; Reef Brazil®, Nike® and Adidas® for sandals and footwear are also in Class #25; Speedo® and Tyr® backpacks and gear bags are in Class #18; Surfer® magazine, Volleyball® magazine and Surf Business(Tm) are in Class #16 for publications.

After the mark is registered in the U.S., it is leading to give observation of this fact by placing the registered trademark symbol, "®", adjacent to the mark. Prior to registration, it is also advisable to use the symbols, "Tm" (for trademarks) and "Sm" (for service marks).

The chief advantages of a federal registration include:

"Constructive Notice" nationwide of the registrant's claim to ownership of the mark. This basically eliminates the good faith defense of an infringer who claims to have lacked actual knowledge of the registered mark.

Registration is also evidence of (a) the validity of the registration; (b) the registrant's ownership of the mark; and (c) the registrant's exclusive right to use the mark in manufactures in connection with the goods or services.

Registration also entitles the registrant to (a) file a lawsuit for infringement of the mark in Federal Court; (b) prevent importation of goods bearing an infringing mark; and (c) use the registration as a basis for registering the same mark in clear foreign countries.

Trademark registrations are valid for 10 years subject to clear use and filing requirements, and are renewable every 10 years, also subject to continued use and reparation filing requirements.

Foreign Trademark Registration

If your product is distributed internationally, then you must, by and large, register your mark(s) in each country where you plan to do business or are doing business. Is this expensive? Yes! On the other hand, the alternative is the possible loss of the potential to sell your product in those countries where a third party has filed a prior application for your mark(s). Therefore, foreign trademark safety is typically obtained on a country-by-country basis. Unlike the U.S., however, trademark ownership in many foreign countries are obtained by registration rather than use. This additional necessitates the point of filing for marks in foreign countries as soon as possible.

One celebrated alternative to the typical convention of registering trademarks on a country-by-country basis is the new (European) society Trade Mark Application which has been available since January 1, 1996 for the filing of applications. By obtaining a society wide trademark registration, an owner of a U.S. Registered trademark, for example, can potentially save both time and money otherwise invested in registering a mark in each separate European country and can thus hopefully attain maximum safety for its trademarks in overseas markets at a minimum of cost.

Conclusion

Whether you are selling products or services, it is very leading to be aware of your trademark and/or service mark and their value. In a competing business environment, the possible for economic loss is sizable if trademark ownership are not acquired, evaluated, protected and maximized. While this record does not portend to cover all the intricacies of trademark law, hopefully it has helped to shed some light on this area of the law which is of celebrated point to the business owner.