Trademarks: Do you need one, and if so, what kind?

Trademarks: Do you need one, and if so, what kind?

Written on July 17th, 2019

What is a trademark?

Per the United States Patent and Trademark Office (“USPTO”) a trademark is a “word phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.”[1]   Likewise, “a service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.” Id.  Some examples of potential trademarks include brand or company names, slogans, and logos.  Trademarks are acquired by use—in general, to obtain a trademark, the mark must be used in commerce

Common Law Trademarks:

The South Dakota Supreme Court has defined a common law mark as being “a property right acquired through use.”  Time Out v. Karras, 392 N.W.2d 434, 437 (S.D. 1986).  In general, the exclusive right to use a mark belongs to the first person who “appropriates it and uses it in connection with a particular business.” Id.  While use of a mark alone may confer property rights, registering the mark it prima facie evidence of the owner/registrant’s right to use the mark.  Id.  Based on this, continued use of a trademark can confer rights to it, but registration can help to solidify those rights.

State Trademarks:

A state trademark confers rights to a name or logo within the state of South Dakota.  In South Dakota, the Secretary of State manages all applications for state trademarks and maintains a trademark registry of existing marks. While a trademark registered with the state of South Dakota protects your mark within the state, it does not necessarily protect your mark nationally or allow you to enforce your rights.  If your company does not provide goods or services outside of the realm of South Dakota, then generally speaking, a state trademark could be right for you.

Pros:

The application is fairly simple and relatively inexpensive.  The Secretary of State’s website provides the applicable forms and costs around $125.

Cons:

If you’re looking for protection outside of the state of South Dakota, this state trademark isn’t for you.

Federal Trademarks:

Federal trademarks confer rights to a word mark or logo within the borders of the United States.  You can also apply for international trademarks in various countries to obtain rights.  The USPTO manages all applications for federal trademarks and maintains a registry of the existing marks.  This is available at the USPTO’s website and is helpful to determining whether a mark may be available.  If your company provides goods or services throughout the nation, a federal trademark could be right for you.

Pros:

A federal trademark provides broader protection than a state trademark and can help get your brand on a national level without fear of someone infringing.

Cons:

The federal trademark application is a little trickier than the state trademark application with higher application fees than the state trademark application. 

Ultimately, there are various methods available to protect your brand.  The attorneys at GPNA can help you decide if a trademark makes sense for your business and what kind of mark needs to be obtained.  Contact us for a free consultation today!

The article is written by Attorney Katie Cook