“Legal Briefs” appears in e-Inside to keep faculty and staff informed of legal issues and their implications. An archive of past Legal Briefs is available online.
If you are using a distinctive word, phrase, logo or other graphic symbol to identify and distinguish a university good or service, chances are you are using a university trademark or service mark (for simplicity the term “trademark” will be used to represent both trademarks and service marks in this brief). Trademarks, like the example provided to the right, symbolize and distinguish the strength, character and quality of goods and services provided by the university, from the goods and services of another. Accordingly, university trademarks should receive appropriate protection to prevent others from using the same or similar trademark.
Although a trademark receives protection from the moment it is first used in commerce, trademarks that are not registered with the United States Patent and Trademark Office (USPTO) receive limited protection, and such protection is usually limited to the geographic area in which the trademark is used. Accordingly, in most cases, federal protection is preferred.
Federal registration of a trademark with the USPTO offers additional protections to prevent someone else from using the mark. More specifically, federal registration puts the public on constructive notice that the university owns the trademark, provides a legal presumption regarding the university’s ownership and exclusive right to use the trademark nationwide, and avails the university of statutory advantages in the event someone starts using the same or a confusingly similar trademark.
The trademark you are using may have already been federally registered by the university. Often, registered trademarks will be accompanied by an “®” notice symbol. Note that the “®” symbol cannot be used on trademarks that have not been federally registered.
Regardless of whether or not the mark is registered, you want to be sure that others know that the phrase, logo, or other graphic symbol you are using is being used as a trademark. To put others on notice that a mark is being used as a trademark, unregistered marks should be accompanied by a “TM” (for goods) or “SM” (for services).
If you are unsure as to whether the university trademark you are currently using is federally protected, please contact the Office of General Counsel. Additionally, please contact the Office of General Counsel if you are unsure if a word, phrase, logo or other graphic symbol you are using is a trademark or if you are using a mark and would like to initiate the federal registration process.
Finally, note that regardless of whether or not a trademark is registered, it needs to be continuously used in commerce in order to receive protection. In other words, trademark protection is a “use it or lose it” proposition.