Trademarks & Service Marks

Trademarks and Service Marks are branding vehicles.  A Trademark can be a word, a name, a symbol, a sound, a color or a combination of two or more of the foregoing that are associated with a good or goods (e.g. a product or products).  A Service Mark can be a word, a name, a symbol, a sound, a color or a combination of the foregoing that are associated with a service.

In the United States, a Trademark and Service Mark is generally protected under both state and federal law.  Unlike patents and copyrights, a trademark is not exclusively subject to federal jurisdiction.  Indeed trademarks are territory-based.  One acquires a trademark or service mark right simply by using the Trademark or Service Mark in association with a good or service (as appropriate) within a given territory.  No registration is needed to acquire this right.  However, like copyright enforcement, often a registration is needed to enforce a Trademark or Service Mark.  Alternatively, filing an application for registration of a Trademark or Service Mark with the United States Patent and Trademark Office (“USPTO”) will reserve the Trademark or Service Mark within the entire United States (assuming you are the first to file for the registration and the Trademark or Service Mark otherwise qualifies for registration).  Because the United States government solely regulates commerce between states, it is a prerequisite of filing with the USPTO that the Trademark or Service Mark owner either does, or intends to, use the mark within interstate commerce.

The Trademark or Service Mark owner, though time, develops a connection in the mind of its customers about the quality and characteristics of its products and/or services.  Perhaps somewhat surprisingly, the laws surrounding Trademarks and Service Marks are intended to protect consumers (not the owner) based upon public policy concerns from confusion caused by those who would seek to copy the Trademark or Service Mark of another.  Generally the test of infringement is whether or not the other parties Trademark or Service Mark is “confusingly similar” to the original Trademark or Service Mark.

Trademarks and Service Marks, unlike patents, can be retained indefinitely.  The caveat is that the Trademark or Service Mark owner must continue to use the Trademark or Service Mark and periodically pay registration fees associated with maintaining the Trademark or Service Mark with any local, state or federal registration agency.

At Boston University, the Office of General Counsel handles the registration of all University owned trademarks.