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VI. Trademarks and Copyrights for the Government Scientist

B. Trademarks

Occasionally, a research program finds itself in the position of offering a service to the public, perhaps even providing specific, tangible materials containing health-related information. In order to help the public become aware of the program, the program develops a name for the service or materials. As the program grows and becomes well known, the program eventually will become concerned that other groups might try to piggy-back on the reputation of the program, perhaps by falsely claiming endorsement by the program, or claiming false information came from the program, or otherwise pawning off its materials as if they came from the program. How can the program protect itself? By registering the name of the materials as a mark in the U.S. Patent & Trademark Office.

A mark is any word, phrase, logo, graphical design, number, letter, scent, sound, or combination of these, that serves to identify the source of goods/services, and to distinguish the goods/services of the mark-owner from similar offerings by other parties. A mark can fall into four categories. A "trade mark" identifies goods, such as IVORY® soap and FORBES® magazine. A "service mark" identifies services, such as UNITED® airlines and BELLSOUTH® telephone. A "collective mark" identifies the provider as being a member of a select group, such as the SUNKIST® fruit growers. A "certification mark" certifies that the goods or services of a provider have met the minimum requirements of quality or included features, such as the UL® mark, which appears on electronic products that have been tested as safe by Underwriter Laboratories. In some limited circumstances, a mark can appropriately be registered in more than one of these categories (such as the AAA® mark, which is both a collective mark and a service mark) or for an entire family of products (such as the wide range of PROCTOR & GAMBLE® products that fill retail pharmacy shelves).

As with copyrights, registration of a mark is technically not a prerequisite to having rights in the mark, but registration provides important additional rights, and the sooner it is. Also, marks that are generic references to the product or service (e.g., FRUIT STAND, for a roadside fruit vendor) registered the better. Marks that are registered should be identified with the "®" symbol; unregistered marks may be claimed by the "." or "_"symbol, for goods or services, respectively. Merely claiming and using a mark, however, is not always enough to earn the right to stop others from using it -- the mark must, in fact, be distinctive from all other marks in use for related goods/services, in order to fulfill its function. Thus, proposed marks that are confusingly similar to existing, registered Marks will not be entitled to protection. ^{64, 65}X

64. See id.; TMEP § 1207.
65. Trademark Manual of Examining Procedure § 1209.01(c) ("TMEP").

Although the Government may own a trademark, license its use, and seek injunctions to stop misuse, the Government unfortunately has no authority to receive royalties on the use of a trademark by another. Nonetheless, the protection to the reputation of a Government-sponsored program remains a viable reason to acquire registration of a mark. Indeed, the NIH already has several registered marks. These include the NCI COMPREHENSIVE CANCER CENTER®, 5 A DAY - FOR BETTER HEALTH®, and PDQ®. Queries about existing or new marks should be sent to the NCI Technology Development & Commercialization Branch, or the NIH Office of the General Counsel.

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