Securing Trademark Protection In the U.S., trademark rights arise when someone adopts and begins using a mark in commerce in connection with particular goods or services. Simply by being the first to use a particular trademark or service mark, one becomes the owner of the mark, entitled to certain common law rights, including, primarily, the right to stop others from using a confusingly similar mark.

Registering a trademark may provide additional benefits not otherwise available to someone who is merely the first to use a mark. For example, registering a mark entitles the owner to seek statutory damages (including the infringer's profits and the costs of the suit) as well as treble damages and attorneys' fees in an infringement action. Registration also (1) creates a presumption of ownership and exclusive right to use the mark; (2) creates a presumption of nationwide use; and (3) may lead to a determination that the registration is incontestable as conclusive evidence of the trademark applicant's exclusive right to use the mark. All these elements make it easier to enforce one's trademark rights against an infringer.

Registering a trademark takes more time and money than registering copyright in a work, and typically requires the assistance of experienced legal counsel in preparing the application and supporting materials. The Patent and Trademark Office filing fee currently is $245 per application per classification of goods or services. Moreover, even in the best circumstances, certificates of registration usually are not issued for at least nine months to a year after the application is filed.

A mark must be distinctive but not descriptive in order to be protected. This can sometimes create a "Catch 22" situation. The more descriptive the mark, the easier it is to identify the goods or services an organization offers, yet the less likely the mark will be entitled to trademark protection.

As with copyright, placing a notice near the mark and registering the mark with the U.S. Patent and Trademark Office are not required to obtain protection. Notice of unregistered and registered marks is still important, however. Using the symbols "TM" or "SM" beside an unregistered mark serves as a warning to the public that the organization is serious about claiming trademark rights in the mark. More important, after the mark is registered (and not before), the organization should use the mark "(r)"--or "Registered in the U.S. Patent & Trademark Office"--next to its mark. If the notice of a registered mark does not appear, the owner may lose the ability to recover profits and damages in an infringement action.

Implications and Recommendations Protecting intellectual property means clarifying who owns what. Under copyright law, when an organization's employee creates a work during the course of employment--for example, a conference meeting brochure--the copyright in the work automatically belongs to the employer organization. No written transfer of copyright is necessary, unless the employee created the work outside the course of employment.

When an outside contractor creates something on behalf of an organization that is not part of a collective work--say, a unique design for a new logo--the copyright belongs to the contractor. In that case, the organization needs a written agreement to transfer the contractor's copyright and related rights to the organization. Purchasing the design does not automatically transfer the copyright.

Protecting intellectual property also means deciding whether to pursue registration with the Copyright Office or Patent and Trademark Office. Copyright registration is easy, inexpensive, and usually worth pursuing, particularly for copyrighted materials that are sold or used over and over again.

With trademarks and service marks, the decision to register is more complicated. If, say, a unique logo is developed for an upcoming conference, the organization must decide whether it is worth the time and expense--and whether the registration will be effective in time to do any good. For a one-time-only conference, it is probably not worth pursuing registration. Instead, use the "TM" or "SM" symbol next to the mark to show that the organization is claiming rights. If an organization plans to use the new logo for every upcoming event--or even more than once--then it is probably worth applying to register the mark. While an application is pending, it should use the mark with the "TM" or "SM" symbol.*