Franchising involves licensing the right to use your trademarks and service marks to your franchisees. The value of your trademarks and service marks can become an important part of your franchise system and franchise offering. Therefore, it is important to select marks that are strong not only from a branding perspective, but also from a legal point of view. It is also important to seek maximum trademark legal protection through federal trademark registration.
What is a Trademark or Service Mark?
A trademark or service mark is:
- a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of
- the goods (for a “trademark”)
- or services (for a “service mark”)
- of one party from those of others.
The term “trademark” is often used generically to refer to both trademarks and service marks. A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.
Establishing Trademark Rights
Rights to trademarks are created through use of the trademark. Use occurs when a mark is used in commerce in connection with a good or service such as on websites, packaging, labels, signs, brochures, menus or other items that clearly identify the mark with the good or service being offered. These are called “common law” trademark rights. These rights protect your mark in the geographic market area where you actually use your mark.
Federal or state trademark registration is not required to establish trademark rights, nor is it required to begin use of a trademark. However, federal registration can secure for you the following important benefits that are unavailable by merely using a mark:
- The exclusive right to us the mark nationwide in connection with the goods or services applied for;
- Constructive notice nationwide that the mark is in use and not available to others;
- Evidence of ownership and validity of the mark and the registration;
- Federal court jurisdiction and statutory remedies for infringement cases;
- After five years of registration, the marks becomes incontestable by others claiming prior use;
- U.S. trademark registration can be used as a basis for obtaining registration in certain foreign countries; and
- Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Similarly, state trademark registration can give you important benefits in the state in which you register your trademark. Note that state trademark registration is different than a state Assumed Business Name, Trade Name or Doing Business As registration.
Please contact us for more information about federal and state trademark registrations.