Trademarks, Service Marks and Trade Dress

Trademarks, service marks and trade dress are important identifiers or symbols of the source or origin of goods and services in the overall marketplace. By continuous use of a trademark, service mark or trade dress in association with particular goods or services, the owner of the trademark or service mark can build up considerable good will and valuable consumer recognition. Today's marketplace is highly competitive and loaded with competitors offering the same or similar products and services. Without protectable brands, no manufacturer, seller, or provider of goods or services could safely and easily distinguish his or her products from those of competitors or pirates. Although modern protection for trademarks, service marks and trade dress is generally taken for granted, this was not always the case.

The first United States trademark statute was not enacted until July 8, 1870 and created certain limited substantive rights for existing trademarks under the common law. Most courts were reluctant, however, to apply the legislation and, as late as 1932, assumed that Congress had no authority to legislate on the substantive law of trademarks. It wasn't until 1946, when the Lanham Act was enacted by Congress, that effective laws were made to help protect consumer expectations of quality and to prevent unfair competition among manufacturers. The Lanham Act was hailed as the first major step towards substantive federal trademark legislation in the United States and provides the federal protection available today.

Among its many provisions, the Lanham Act allows manufacturers, sellers and service providers to register certain words and symbols which, through use of such words or symbols, serves to identify them and distinguish their respective goods and services from those of others. In addition, the Lanham Act imposes civil liability for unauthorized use of confusingly similar words and symbols in such a manner that would mislead purchasers as to the true source of the goods. In essence, the Lanham Act broadened the federal role and placed relatively few restrictions on what may be considered registerable, i.e., as long as the mark could be characterized as distinctive and nonfunctional. It should be noted that, while the Lanham Act offers protection for trademarks and service marks, it does not prevent others from making or selling goods or services that are the same as those offered by a trademark or service mark owner.

Prior to 1989, a valid federal application to register a trademark or service mark could not be filed in the United States Patent and Trademark Office without prior use of the mark in association with particular goods or services in commerce. It is now possible to file a federal application based upon a good faith intent to use a mark in commerce. This allows individuals and businesses to create a prospective business plan in connection with new products or services, knowing in advance that the word or symbol they have chosen to identify the products or services can be registered. Distinctive trademarks and service marks may be registered on the Principal Register and are thereby entitled to a presumption of validity and constructive notice of the registrant's nationwide trademark rights. Trademarks and service marks that are registered on the Supplemental Register are not considered distinctive of the goods and services of the owner at the time an application is filed, but may become distinctive through extensive use. At that point, they can be transferred to the Principal Register.

Dilworth & Barrese, LLP offers its clients expert advice and services in connection with trademark/service mark clearance and registerability. We conduct right-to-use searches, analyses and provide legal opinions concerning adoption and use of trademarks, service marks and trade dress throughout the world. When our clients desire, we prepare and prosecute trademark/service mark applications on their behalf in the U.S. Patent and Trademark Office. Dilworth & Barrese has local associates in nearly every corner of the world and has extensive experience in coordinating world-wide protection and registration of trademarks and service marks, an extremely important consideration in the rapidly expanding global marketplace.

Dilworth & Barrese, LLP enforces and defends the rights of its clients with respect to trademarks, service marks and trade dress in the federal courts and in administrative proceedings such as those involving federal registration oppositions and cancellations in the United States Patent and Trademark Office. There is simply no aspect of trademark practice that we cannot handle in our capacity as experts.