Trademark Law for Non-Lawyers

Trademarks are the banner for a franchise concept, enabling franchisors to operate under one distinct name which is, or becomes, well known to consumers or third parties.

In other words, trademarks lend a particular image to the franchise company. Like brand recognition, your trademark provides you with an identity associated with the franchised goods or services.

Many franchisors commonly use the term  “trademark” to encompass both service marks and trademarks, either of which can be afforded federal and state protection under the federal Trademark Act of 1946 (“Lanham Act”) or various state statutes. Although the terms service mark and trademark are often used interchangeably, they actually are quite distinct. A trademark is technically a name or symbol associated with a good or product that distinguishes itself from another manufacturer, while the term service mark refers only to services.  Both, trademark and service mark, allow the consumer to recognize and identify the product or service from one franchisor to another.

To be registered with the U.S. Patent and Trademark Office, the mark must identify a single source, distinguishing it from that of another party. To be distinguishable, the mark cannot be a generic term or confusingly similar to another mark or trade name.  It cannot be the name, portrait or signature of a living individual or deceased person without express permission of the deceased representative, nor can it compromise our flag.  It also cannot be a coat of arms or insignia of another country or state or contain scandalous, deceptive or immoral matter.

Trademarks and service marks provide protection from others attempting to establish recognition through your company’s identity, recognition being the “key” to any successful franchise system. Once your trademark or service mark is registered on the Principal Register of the U.S. Patent and Trademark Office, you acquire national recognition, conferring superior rights.

Even after registration, you must file affidavits of continued use with the U.S. Patent and Trademark Office to maintain your registration. If you fail to file the continued use affidavits, you may lose your rights to the registered mark. Therefore, make sure you track all registered marks for your franchise and make sure they are timely renewed.

If you would like to find out more information on federal and state registrations, please call or e-mail us.

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