Disclaimer:  The following material is informational and general in nature and not intended to be offered as legal advice.  To obtain legal advice an attorney should be consulted with the specific facts of your case.

1.0 A trademark is a brand name that applies to a product (or “good” in trademarkese).  As an example, the name Budweiser® is associated by many people with a particular brand of beer, while seeing the name McDonalds® or the golden arches symbol (not shown) conjures up thoughts of a chain of fast food restaurants.

1.2 A trademark can be a design, symbol, word, phrase, number, slogan, shape, color, sound or smell.  There are limits on what can be used as a trademark, which will be discussed below.

1.3 Trademarks are used to identify and distinguish one company’s products from those of another.  They are also used as a symbol of quality assurance and goodwill.

1.0 A service mark is a brand name that applies to a service.  A service is an activity performed by one party for another, usually for compensation, where no goods (or products) are exchanged.  An example of a service mark is American Airlines® for a company providing commercial air service.

1.1 There is sometimes a fine line between whether a mark should be treated as a trademark or a service mark.

1.2 A service mark, like a trademark, can be a design, symbol, word, phrase, number, slogan, shape, color, sound or smell.  There are limits on what can be used as a service mark, which will be discussed below.

1.3 Service marks are used to identify and distinguish one company’s services from those of another.  They are also used as a symbol of quality assurance and goodwill.

1.0 A trade name, as distinguished from a trademark or service mark, is simply the name of a business, company or corporation.  It is possible for a trade name to also function as a trademark or service mark, but it requires actual use in commerce in connection with either goods (products) or services.

1.0 It surprises many people to learn that trademarks and service marks are regulated by federal, state and common law.

2.0 Federal Trademark Registration

2.1 Trademarks (and Service Marks) are subject to federal registration under the Lanham Act of 1946 (15 U.S.C.).  The Lanham Act is a codification of common law principles applying to trademarks and service marks.  

2.2 Federal Registration brings many benefits to a trademark or service mark owner, including:

2.2.1 It is considered prima facie evidence of the validity of the registered mark, the registrant’s ownership of the mark and the exclusive right to use the mark in commerce in connection with the specified goods;

2.2.2. It is prima facie evidence of continued use of the mark since the filing date of the application;

2.2.3 It achieves a status of “incontestability” after five years of continuous use and the filing of an affidavit.  Incontestability in this sense means that the mark cannot be canceled on the bases of prior use or descriptiveness;

2.2.4 It is constructive notice of a claim of ownership of the mark;

2.2.5 It confers nationwide rights; and

2.2.6 It confers the right to bring suit in federal court, regardless of diversity.

3.0 State Trademark Registration

3.1 Every state has its own trademark registration system.  In most, if not all cases, state trademark registration is little more than posting the requested trademark or service mark on a computer database.  When trademark or service mark searches are performed, the state registration will also show up, informing the potential mark owner of another use of the exact or a similar mark.

3.2 I am not aware of any state conducting a substantive examination of a trademark or service mark.

4.0 Trademark Common Law

4.1 Common Law is judge made law as opposed to legislative or statutory law and refers to law and the corresponding legal system developed through decisions of courts and similar tribunals (called case law), rather than through legislative statutes or executive action.
Common law is law created and refined by judges: a decision in a currently pending legal case depends on decisions in previous similar cases and affects the law to be applied in future cases. If no authoritative statement of the law exists, judges have the authority and duty to make law by creating precedent.[1]
The body of precedent is called “common law” and it binds future decisions. In future cases, when parties disagree on what the law is, an idealized common law court looks to past precedential decisions of relevant courts. If a similar dispute has been resolved in the past, the court is bound to follow the reasoning used in the prior decision (this principle is known as stare decisis). If, however, the court finds that the current dispute is fundamentally distinct from all previous cases, it will decide as a “matter of first impression.” Thereafter, the new decision becomes precedent, and will bind future courts under the principle of stare decisis.

4.2 Common law rights apply to trademarks in cases where a mark has been used for a substantial period of time without the benefit of federal registration.  There are cases on the books where a first party who is the first to use a mark without acquiring federal registration has superior rights to a later second party using an identical or similar mark who obtains federal registration.
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Richard C. Emery 
Intellectual Property Attorney
3564 Rollingview Dr Suite G
Whitebear Lake, MN 55110
(651) 704-0080
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