Guidelines for a Trademark

By Louis Kroeck

Some of the pertinent guidelines in trademark law include the guidelines for applying for a trademark, the guidelines for trademark infringement and the guidelines for trademark dilution. Additionally, some companies set forth independent guidelines stating how their trademarks may be used by other parties. Although the guidelines a company establishes determining how their trademark may be used will differ, many of these guidelines will share some similarities. In trademark law the party holding the prior trademark registration is called the senior mark holder and the party with the secondary registration is called the junior mark holder.

Some of the pertinent guidelines in trademark law include the guidelines for applying for a trademark, the guidelines for trademark infringement and the guidelines for trademark dilution. Additionally, some companies set forth independent guidelines stating how their trademarks may be used by other parties. Although the guidelines a company establishes determining how their trademark may be used will differ, many of these guidelines will share some similarities. In trademark law the party holding the prior trademark registration is called the senior mark holder and the party with the secondary registration is called the junior mark holder.

Registration

In order to be eligible for trademark registration, the material in question must be a phrase, design, logo, symbol or word identifying goods or services. If the mark identifies services it is generally referred to as a service mark, but for the most part the terms trademark and service mark are used interchangeably. In order to register for a trademark, you will need to identify the goods and services you wish to have the mark identify. You will also need to determine your basis for filing the mark, including whether the trademark is currently being used in commerce or if you intend to begin using the mark at some later date.

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Trademark Infringement

The guidelines for establishing a claim of trademark infringement are based on a showing of likelihood of confusion. Many factors are analyzed when determining if a similar trademark creates a likelihood of confusion, including: the strength of the original trademark, the similarity of the two trademarks, the proximity of the goods being identified by the trademark, evidence of consumer confusion, the marketing channels used, the sophistication of the typical consumer purchasing the goods, and the intent of the individual registering the junior mark.

Trademark Dilution

In addition to trademark infringement, trademark holders may bring a claim of trademark dilution against a junior mark holder if the senior mark is famous. Famous marks are federally registered marks that have achieved a high level of recognition in the eyes of the public. The guidelines for establishing famous marks are: the geographic extent of the market, the degree of distinctiveness, the duration and extent of use of the mark, the amount of advertising and publicity, the channels of trade, the degree of recognition in trading areas, use of similar marks by other parties and registration of the mark. If the senior mark holder can establish the above guidelines, he may bring a claim for trademark dilution by showing that the junior mark blurs or tarnishes his mark. Likelihood of confusion is not necessary in a trademark dilution claim.

Use Guidelines

Many companies establish guidelines for how their trademarks may be used by other parties. Most guidelines will establish when another party may display the trademarked logo of the mark holder, how the logo or trademark may be used in terms of identifying the goods of the mark holder, rules for proper use, rules for attribution and what constitutes unauthorized use. Additionally, some use guidelines will establish guidelines for how trademarks are to be used by educational institutions, publications, conferences and seminars.

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References

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