by Scott Havlick and Beth Nesis

Park City, Crested Butte and Killington all have something in common. These resorts, like many others, are named after the closest nearby town. Other resorts have chosen names totally unrelated to their location, such as Purgatory, Sugar Bowl and Snow Summit. As mountain resorts establish their brand identities, they also need to protect their names and trademarks.

Monarch Ski and Snowboard Area in Colorado learned this lesson the hard way. After years of failing to police the use of its logo, the resort found that vendors had often changed the logo's colors, shape and form. "We found t-shirts companies, and sometimes even our in-house staff, changing the logo so that it didn't remain in its original state," said Monarch's General Manager Rich Moorhead. "When the new owners took over in 1996, we decided to redesign and modernize Monarch's logo so it better reflected our resort. In doing so, we also trademarked it. We have now formalized our procedures by having signed vendor agreements, to insure that the logo's correct colors are used and it appears consistently in the marketplace," he added.

What's a Trademark or Service Mark?

Most are probably familiar with trademarks-a company's brand for its products. A service mark is a trademark that brands a source of services. Here, the term "trademark" applies to both trademarks and service marks, because generally the rules are the same.

Virtually any word, name, symbol, color scheme, sound, smell, product configuration or other device that uniquely identifies a company's product or service can be enforced as a trademark. However, a trademark must be unique and not a word or symbol that describes characteristics, features, functions, or the geographic source of the goods or services.

When Brainstorming New Marks, Think Only of Non-Descriptive Marks

Ski areas are often named after local geographic features or the nearby town. These types of geographically descriptive marks are difficult to protect and become protectable only after a long and continuous period of use. Even then, the trademark owner cannot prevent others from describing the geographic area using the same word or words- for example, Vail, Aspen, Taos, Jackson Hole, etc.

If your ski area falls into this category, you can infuse additional trademark protection by incorporating design elements into the ski area's mark. Such design elements might include a unique typestyle, the consistent use of a particular color combination, or other more elaborate graphic elements. For example, Vail's distinctive "V" design adds important source identification value to its otherwise geographically descriptive mark.

Optimally, you should consider names or trademarks that have no meaning in our language, such as Kodak or Exxon. Another alternative is using a word that doesn't apply to your particular product, such as Apple for computers or Camel for cigarettes. These names are valuable because the owners can keep others from using a confusingly similar mark.

Conduct a Search Before Adopting A New Mark

Before adopting a new work mark, slogan or graphic you should conduct a trademark search. While not required, a search will allow you to determine whether you would be infringing another user's rights to that mark. A search will also allow you to assess the breadth of rights you can expect with your proposed mark and whether you can federally register your new mark.

Generally, two types of searches are available. A preliminary search of all U.S. Patent and Trademark Office records and the trademark records of all 50 states helps determine whether there is a clear block to a proposed mark and which proposed mark is more likely to be available, if several are being considered. A preliminary search can be done within a day and costs about $150.

Before any new mark is adopted, a full search should be conducted. This covers the same databases as a preliminary search, plus a number of "common law" databases (trade journals, telephone directories, Dunn & Bradstreet records, and product directories). Also, a full search is more capable of identifying synonyms. Plan to spend about $340 for a full search.

Use it or Lose it

A common law search is important in the United States because trademark rights arise from actual use rather than registration. If you use your name, logo or symbol to identify goods or you promote your services by using a brand, you own the trademark or service mark rights. These rights include the ability to protect your logo or symbol from anyone else using it or anything similar to it. Trademark rights, including priority dates, are abandoned when use of a mark ceases.

The Do's and Don'ts of Trademark Use

Whether or not you register your mark, the proper use of your mark is crucial to preserving your rights. A few simple rules should always be followed:

• Do use your trademark in conjunction with your product name or logo and/or on the container or packaging in which the goods are sold. Use of a trademark in advertising, but not on a product or packaging is not sufficient. In contrast, use of a service mark in advertising or signs offering the subject services is adequate use to establish or maintain service mark rights.

• Do use capitalization, quotation marks, different fonts or colors to distinguish a trademark or service mark from other text. For example, "BURTON" snowboards. You can also underscore the fact that your are claiming trademark or service mark rights by placing a small "™" or "K" following the mark.

• Do use the "®" notation wherever you use a federally registered mark.

• Don't use a trademark in a possessive form, unless itself is possessive. For example, JOHNSON'S Baby Oil.

• Don't pluralize a trademark. Instead, the common noun should be pluralized. For example, two "SALOMON" skis rather than two "SALOMONS".

While it is not necessary for you to register your trademark rights with United States Patent and Trademark Office, certain benefits can be obtained from registration. The owner of a registered mark is presumed to own a valid mark. After five years of registration, the validity of that registration is "incontestable" in most instances. Another benefit is that the owner of a federal registration is granted a nationwide priority date for the registered mark beginning the date the federal registration application was filed. This is particularly useful to ski areas whose marketing efforts (and therefore trademark rights) are regional or local rather than national. Additionally, of you plan to adopt a mark, but have not begun actual use, it is possible to file a "intent-to-use" trademark registration application. By doing so, you can secure a priority date for that mark even before its use. In contrast to federal registration, state registrations are usually of limited value since they typically don't carry broad protection. Therefore, if you are considering registering your trademark, do it federally.

Consistent Policing of Your Mark

Any use of your mark on products sold by third parties, even local merchants, should be permitted only where a written license agreement is in place. Otherwise, any subsequent infringer of your mark can point to your carelessness in policing your mark and argue that your have abandoned your trademark rights.

License agreements don't need to be long, intimidating or require the user to pay. You should insist on proper trademark that usually includes specific guidelines and camera-ready artwork, and control of the nature and quality of the goods or services being licensed.

If you have permitted extensive uncontrolled third party use of your mark, you may decide to implement a trademark change or begin to assert your rights by giving or selling licenses and watching for new infringers. For a modest fee, less than $200 per year, you can hire a "watch service" which monitors any attempts to register your mark or any phonetically identical marks worldwide. You should oppose newly-filed, confusingly similar registration applications and pay attention to any use of your mark, even by locals.

Remember, the more distinctive your trademark, service mark or business name, the more valuable and protectable it is. After selecting a distinctive mark or name, use it properly. After all, use is what yields trademark rights. Finally, be sure to budget both time and dollars to policing your marks.

Scott Havlick is an attorney with the law firm of Holland & Hart, LLP. Mr. Havlick 's primary area of practice is domestic and international trademark registration and litigation. Ms. Nesis, who previously worked at Holland & Hart, LLP, now focuses her practice in the areas of employment law and commercial litigation.