TRADEMARK BASICS

 

What is a trademark?

A trademark is a word, phrase, symbol or design which identifies and distinguishes a source of goods or services of one company from those goods or services of another. Overall, a mark represents a branding effort by a business, the most common examples being a logo or a slogan. The purpose of a trademark is to indicate the source or origin of a good or service.

 

What are trademark rights?

Trademark rights allow the owner to bring a trademark infringement claim against others who are using a same or similar mark in such a way that would confuse, mislead or deceive consumers as to the source or origin of the product. Trademark rights allow the owner to prevent competitors from reaping off of the trademark owner’s goodwill.

 

Why are trademark rights important?

A trademark is an incredibly important business asset as it allows a business to promote the reputation and quality of their products to the consumer. Trademark rights allow a company to distinguish themselves from their competitors without fear that a competing product of lesser quality will adopt the same mark thereby confusing or diluting the public’s perception of their product. In the end, a consistently and properly used trademark will create a goodwill associated with your business. It is for these reasons the formal protection of a trademark by registration and proper use can be so important.

 

What makes a trademark “stronger”?

The same qualities which make a business owner like a trademark (easy to remember, catchy, describes the product) are the same qualities which make the protection of a mark more difficult. In fact, marks which describe the product or service, called “descriptive” marks, are not only hard to protect but are most likely already in use by another company. Please click on TRADEMARK STRENGTH CHART which contains information on creating a good, strong trademark.

 

Is a U.S. trademark registration necessary to obtain trademark protection?

No. Trademark rights in the United States arise from using a trademark in commerce, not from registration.

 

Common Law Rights – If you are making proper use of your mark, you can successfully make others stop using your mark, or get damages, based solely upon your earlier use of the mark in connection with your goods or services. These are called common law trademark rights, are they are limited in geographic scope to only those locations the mark is being used. While geographically limited, you can still prevent others from using a same or similar mark if you can show you were the first to use the mark in the area in connection with specific goods or services.

 

State Rights – Alternatively, each of the 50 states operate a trademark office within the Secretary of State. In general, state registrations do not grant rights beyond those already gained through common law use. No examination is made to determine whether your mark is the same as anyone else’s. This means that two people can be using the same mark in the same area and not even know it. As such, state registrations are fairly limited and can sometimes create a false sense of ownership.

 

Federal Rights – Formal registration provides significant advantages and greater protection than common law use, or state registration. For example, federal registration provides the following:

(1) Nationwide Priority Date. The filing of a U.S. registration application establishes a nationwide priority date, which proves that you were the first person to use a mark.

(2) Presumption of Validity and Ownership. Owning a registration creates a presumption that the trademark is valid, that you are the owner, and that you have the exclusive right to use the mark in commerce.

(3) Constructive Notice. Registration gives constructive notice to all third parties that you own the registered mark, thus eliminating any defense of good faith adoption after the filing date.

(4) Easily Searched. Registered marks are easily searched, reducing the chances that a competitor will unknowingly adopt a closely similar mark.

(5) Customs Service Protection. A registered mark can be recorded with the U.S. Customs Service and used to deny entry into the U.S. of any infringing or counterfeit products.

(6) Incontestability. After five years, a registration may become “incontestable,” eliminating a number of defenses that might otherwise be available to an infringer, including the defense that your mark is descriptive.

 

Should I even bother with getting a U.S. registration?

Federal registration is not right for everyone. If you are unsure about federal registration, answering these questions may help:

  1. Do you care if someone else were to adopt “your” trademark in a far-off part of the United States?  If the answer is no, and you are only concerned with infringers in your local geographic area, then the advantages of filing a U.S. registration may not outweigh the costs.

  2. Would you like to use the ® symbol next to your mark? Only those who have successful federal registration may use the ® symbol. This provides potential competitors with a warning that your mark is protected and policed. Those without federal registration may only use “TM” next to their mark representing a good, or “SM” next to a mark representing a service.

  3. Are you currently making nationwide use of your mark (for example selling goods to customers across the United States) or will you be doing so very soon?  If yes, filing a U.S. application will allow you to secure a nationwide priority date immediately and will grant you nationwide rights that can be enforced once your registration issues.

  4. Do you plan on working with re-sellers or distributors?  If yes, having trademark registration lets you control your own brand and create a positive reputation.

  5. Are you worried about competition from foreign-made, counterfeit goods?  If so, the benefits of U.S. Custom Service Protection make pursuing a registration worthwhile.

 

What is involved in the registration process?

To obtain a federal trademark registration, an application must be filed, along with a filing fee of $225-$325 per class. It takes about twelve to 36 months from the date of filing to obtain a U.S. registration, but your priority date relates back to the date of filing. Click on TRADEMARK APPLICATION FLOW CHART which briefly summarizes the basic U.S. trademark prosecution process. 

 

How long does trademark registration last?

Trademark rights may last indefinitely if the mark is being used and policed properly; however, rights can be lost when a mark is considered “abandoned.” A mark may be abandoned several ways, including (1) non-use, (2) becoming generic, or (3) by uncontrolled or “naked” licensing. Loss of a trademark is often unintentional and may significantly impact a company or business and its reputation. Understanding how to protect your trademark from abandonment is crucial.

 

How much does federal registration cost?

The cost of federal registration depends on multiple factors, such as the number of classes being registered for, and the amount of communication required between the applicant (or the applicant’s attorney) and the trademark office. All applicants are required to pay a fee to the government between $225 and $325 per class depending on the type of application being filed. Beyond that, the other costs associated with trademark applications are usually attorneys fees. Katherine Sullivan, PLLC, offers  flat-rate, package deals and hourly fee options which allow the client to choose which type of payment works best.

 

Are trademarks the same as copyright or patents?

No. A trademark protects words, phrases, symbols, or designs that identify the source of the goods or services and is used to distinguish them from those of others. Copyright, on the other hand, protects original works of authorship. A patent protects inventions or discoveries.

© 2015 by Katherine Sullivan, PLLC