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Businesspeople often put intellectual property issues on the back burner. They know that these are important matters that need to be attended to someday, but someday never quite seems to come. This article provides a primer for the busy businessperson on trademarks and service marks, along with brief discussions of the other types of intellectual property and how they may affect businesses.

Trademarks and service marks

A trademark is a word, phrase, symbol, design or other unique signifier that identifies and distinguishes the source of the goods of one party from those of others. Your trademark tells the world that you are the source of this product.

A service mark is similar to a trademark, except that it identifies and distinguishes the source of a service rather than a product.

The function of a trademark is to prevent confusion in the marketplace. Consumers need to know where goods and services come from, in order to have confidence in their purchases. As a result, for a mark to be protected, it must be unique with respect to that set of goods or services. Terms that are generic or confusingly similar to existing marks cannot be protected. However, similar or identical marks can exist where the goods or services are sufficiently distinct.

Once a company owns a trademark, that mark can be protected indefinitely. Some trademarks have been in use for centuries. Companies and individuals often have hidden trademarks that they are not even aware of, such as:

¥ The company's name or logo

¥ The company's Web address

¥ Other logos and graphics

¥ Product names, slogans or catchphrases

Trademark registration

Did you know that the famous yellow smiley face was never registered? Several people have claimed to be the creator of this world-famous symbol, which became popular in the 1960s. Because the real creator didn't take the time to protect this trademark, he or she was not able to profit from decades' worth of merchandising opportunities.

One can exercise certain rights with respect to a trademark that is not registered, known as a "common law" trademark. However, owning a federal trademark registration provides the following advantages:

¥ A registered trademark is an asset that adds value to a company.

¥ Registration informs the public of the registrant's claim of ownership of the mark.

¥ Registration creates a legal presumption of ownership and the exclusive right to use the mark nationwide.

¥ Registration creates the ability to bring a lawsuit in federal court.

¥ A U.S. registration can be a basis to obtain registration in foreign countries.

¥ Registration creates the ability to file with the U.S. Customs Service to prevent importation of infringing foreign goods.

Trademark symbols

In the U.S., trademarks and service marks are often identified by the following symbols:

TM and SM refer to trademarks and service marks that have not been registered with the United States Patent and Trademark Office (USPTO).

(r) refers only to those marks which have been registered with the USPTO. It is fraudulent to use this symbol with any mark that has not been registered.

Copyrights, patents and trade secrets

It is common for the terms of the various types of intellectual property to be confused. Here is a short summary:

¥ Copyrights: Copyright law protects original works of authorship, including literary, dramatic, musical and artistic works such as books, movies, songs, computer software and works of visual art. Copyright protects the form of expression. The underlying ideas are not copyrightable. Copyrights can also be federally registered, and while the term of ownership is very long (for most works which have recently been created in the United States, the term is the life of the author plus 70 years), copyrights do not last forever. The copyright symbol is (c).

¥ Patents: A patent for an invention is the grant of a property right to the inventor, issued by the USPTO. The term "patent" usually refers to a right granted to anyone who invents or discovers any new and useful process, machine, article of manufacture or composition of matter, or any new and useful improvement thereof. In the United States, patents usually last 20 years from the filing date.

¥ Trade secrets: A trade secret is a formula, practice, process, design, instrument, pattern or compilation of information used by a business to obtain an advantage over competitors or customers. The formula for Coca-Cola is an example of a valuable trade secret. Trade secrets are not registered -- if one was to try to register a secret, it would no longer be a secret, and thus the rights would disappear. The way to maintain rights in a trade secret, therefore, is to keep the information out of the public domain through documents such as nondisclosure agreements.

You should now be comfortable using the words trademark, service mark, copyright, patent and trade secret, and the (tm), SM, (r) and (c) symbols, without getting them confused. If so, you should feel a sense of accomplishment - everyone from the New York Times to legal bloggers seems to get these terms and symbols confused on a regular basis.

Lizerbram is the founder of David Lizerbram and Associates (www.LizerbramLaw.com), a San Diego-based law firm focused on providing high-quality, affordable legal services in the areas of intellectual property, estate planning and general business transactional law. The preceding article is not intended to provide legal advice. For more information regarding these matters, contact an intellectual property attorney or your local bar association for a referral.

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