Date: Mon, 17 Aug 92 16:02:03 EDT
From: Jerry Leichter <leichter@lrw.com>
Newsgroups: comp.dcom.telecom
Subject: Trademarks and Service Marks
Organization: TELECOM Digest
X-Submissions-To: telecom@eecs.nwu.edu
X-Administrivia-To: telecom-request@eecs.nwu.edu
X-Telecom-Digest: Volume 12, Issue 638, Message 5 of 12

Alan Varney writes:

> Are you sure it wasn't:

> "Priority Ringing(SM) - another new idea ..." ?
> {Priority Ringing(SM) is a Service Mark of Pacific Telesis}

You see, you can offer a known product as a "service", give it a new
MARKETING NAME, and claim/register it as your own.  In fact, there are
many lawyers making a good living off of the courts and this little
gimmick -- they register lots of names and acronyms as theirs, and
then sell you the right to use them (because you won't find any
desirable one's left).

Sorry, no, not under US trademark law.  A trademark (or service mark;
the latter is a recent innovation, but as far as I know it follows the
same rules) is established by "use in trade", NOT by registration.
Many trademarks are never registered.  (Registration is useful if you
ever want to sue anyone for misuse of your trademark, but it doesn't
ESTABLISH the protection, it just helps you enforce it.  Registration
is like posting the borders of your land; it's your land anyway, but
it's much easier to go after trespassers if the postings are there.)

The only way to CLAIM a trademark is to use it in trade: That is,
present it to the public as an identifying mark of a product or
service that you are offering for sale.  A normal registration has to
include information about where the trademark had been used in trade;
without that, the registration will be rejected.

Congress amended the law a couple of years ago to allow a kind of
pre-registration in anticipation of use of a new trademark.  This
was done in recog- nition of the expense and time involved in
introducing a new trade name.  The pre-registration procedure is
intended only for this purpose, and you can only pre-register for a
limited amount of time (I think up to one year).  If you haven't
started using the trademark "in trade" by the end of that period, you
lose any special rights to it.  Hence, it's impossible to "save up"
useful trademarks, either for your own eventual use, or for sale to
others.

Note again that this is all under AMERICAN law.  Laws in some other
countries do permit registration of trademarks that are not in active
use.  This is particulary true in Asia, where speculators used to make
money by registering the names of Western companies on the theory that
those companies would reach their country sooner or later, and would
have to pay for the right to use the same name there as at home.
Western businesses these days make sure to register any trademark they
have any expectation of ever using world-wide as soon as, and as
widely as, they can.

Mr. Varney also later jokes about companies copyrighting their names.
This would be just about impossible to do; a company name is not the
kind of thing that copyright law protects.  (It would also be the
wrong kind of protection -- it would prevent newspapers from citing the
name of the company in news reports.  How many companies would give up
the free publicity?)


Jerry