What are the various types of trademarks?

• Trademarks come in four forms
  1. common law trademarks
  2. state trademarks
  3. federal trademarks
  4. foreign trademarks
• A Common Law Trademark (unregistered)- The first and easiest way to obtain a trademark, and unfortunately the most common way, is to do nothing–just adopt the name and use it in commerce. If it becomes distinctive, either to the business or the product, a common law trademark comes into existence. Generally speaking, common law trademarks are limited to those particular products to which they have become distinctive, in the limited geographic region where the goods or services are marketed. This type of trademark is the most limited, but does give the holder certain rights.
• A Registered Idaho State Trademark is obtained from the Idaho Secretary of State’s Office in Boise. State registration gives you the right to exclude the later use of others of the same or confusingly similar trademark in Idaho only.

Do not confuse an Idaho trademark registration with a certificate of assumed business name or any other corporate documents filed with state or local governments. For instance, the certificate of assumed business name is filed with the county recorder primarily for the benefit of creditors and has absolutely nothing to do with obtaining a protectable trademark registration. The concept of protecting the name by filing a certificate of assumed business name is perhaps one of the most common misconceptions in business communities.

• A Federal Trademark Registration provides the best protection available by giving you the right to exclude the later use of others of the same or confusingly similar trademark anywhere in the United States. There are two bases for federal trademark registration:
  1. In Use. The first is that the mark is being affixed to goods or services and is being used in interstate commerce. This is the traditional, long-standing criteria for obtaining a federal registration. If the mark has been used in interstate commerce for more than five years, it is presumed to be distinctive, and registration can usually be obtained without much problem.
  2. Intent to Use. The second, added by the Trademark Revision Act of 1989, enables one to obtain an approval of the registration based upon a bona fide intent to use the trademark in interstate commerce. This is a subtle distinction with major economic benefit.

• A Foreign Trademark Registration is usually on a country-by-country basis, and if your products are to be sold in other countries, you may wish to register trademarks in those countries. Trademarks registered in foreign countries do not affect your registration of the mark in the United States. If a trademark is already owned or an application has already been filed in the United States, the owner may file for foreign protection under the Madrid Protocol, which was enacted in November 2003.There are cost saving benefits by filing under the Madrid Protocol versus on a country-by-country basis. They include: the application can be filed in English (no translation costs), the application can be directly filed by my office (there is no need to hire a foreign attorney for filing), and there is one renewal date and one renewal fee.

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