TRADEMARKS BASICS

Trademarks make it easier for consumers to quickly identify the source of a given good. Instead of reading the fine print on a can of cola, consumers can look for the Pepsi trademark. Trademark law furthers these goals by regulating the proper use of trademarks. The trademark "Nike," along with the Nike "swoosh," identify the shoes made by Nike and distinguish Nike shoes from shoes made by other companies, for example, Adidas or Reebok.

When such marks are used to identify services rather than products, they are called service marks, and they are generally treated just the same as trademarks under Trademark Law. Trademark protection can extend to symbols and phrases to include other aspects of a product, such as its color or its packaging.

Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the U.S. Patent and Trademark Office ("PTO"). 15 U.S.C. § 1127(a). Remember, however, that descriptive marks qualify for protection (and can be registered) only after they have acquired secondary meaning.

Unlike the use of a mark in commerce, registration of a mark with the PTO gives a party the right to use the mark nationwide, even if actual sales are limited to only a limited area. This right is limited, however, to the extent that the mark is already being used by others within a specific geographic area. If that is the case, then the prior user of the mark retains the right to use that mark within that geographic area; the party registering the mark gets the right to use it everywhere else.