What Is A Trademark And Why Should You Register It
A trademark is a legally registered or established symbol, word, phrase, or design that uniquely represents a company, product, or service. A unique and distinctive mark plays a pivotal role in setting apart a business's offerings from its rivals. Additionally, it contributes significantly to the brand's identity and commercial value. It is worth noting that trademark protection only applies to a specific category of goods or services for which it is registered. Infringement may transpire if another party utilizes a substantially similar mark in the same or similar class of goods and services, and which may lead to consumer confusion.
While trademark law is fundamentally written and interpreted with regard to the effect on the consuming public, it by practice also inures to the benefit of registered trademark owners. An owners rights concerning a mark usually begin simply by using the mark in commerce. However, owning a federal trademark registration provides several key advantages, including:
1. Exclusive Rights: It gives the owner the exclusive right to use the mark in connection with the goods or services for which it was registered. This means they can prevent others from using similar or identical marks with the same types of goods or services.
2. Legal Protection: It serves as legal evidence of ownership over the mark. This can be crucial in legal disputes regarding trademark infringement. It can make resolving those disputes much less expensive or time-consuming, even negating the need for court action at all.
3. Deterrence: It notifies the public of the registrant's claim of ownership of the mark, discouraging others from using the same or similar marks.
4. Basis for Foreign Registration: It can serve as a basis for registering the trademark in foreign countries, opening up global protection.
5. Right to Sue: It gives the owner the right to sue for damages in federal court if someone else uses the mark unlawfully. It also allows the owner to obtain potentially significant statutory damages, without the need to prove actual damages. This is perhaps the biggest benefit, and it is also why trademark registration helps to keep others from infringing in the first place.
6. Use of R Symbol: It grants the right to use the federal registration symbol ®, showing that your goods or services are registered and protected.
How To Register A Trademark
Registering a trademark in the U.S. generally involves the following steps:
Business Identification and Mark Design: The first step is to identify the name, logo, or slogan that you wish to trademark. It is important to ensure that the selected mark is distinctive and does not resemble any existing trademarks.
Trademark Search: Once the mark is determined, conduct a comprehensive trademark search to verify if the chosen mark or a similar one is already registered or pending registration. This step is crucial to avoid potential legal issues and disputes.
Prepare Application: After verifying the availability of your mark, you can proceed to prepare your trademark application. This includes identification of the goods or services that your mark will cover and a clear image or demonstration of your mark, if applicable.
File Application with USPTO: Submit your application to the United States Patent and Trademark Office (USPTO).
USPTO Examination: After submission, your application is reviewed by an examining attorney at USPTO. This process may involve correspondence regarding legal requirements or clarifications.
Publication for Opposition: If approved by the examining attorney, the mark is then published in the Official Gazette. This publication allows any party who believes its own rights would be damaged by registration of the mark to oppose it.
Registration: If there is no opposition, or if such an opposition is unsuccessful, the trademark will be officially registered and thus protected at a federal level.
Please note that this is a generalization of the process, and each individual case may require additional or different steps. It's always advisable to seek legal advice from a competent trademark attorney near you when registering a trademark to ensure accuracy and full protection of your intellectual property rights.
Potential Risks Of Not Registering Your Trademark In Time
There are several risks associated with not registering a trademark. Here are a few key dangers:
Limited Protection: Without registration, the you may only have rights to the trademark in the geographic area where it is being used, but this is significantly weaker than the nationwide protection offered by federal registration.
Inability to Sue in Federal Court: Trademark registration gives you the opportunity to sue for infringement in federal court. Without registration, your ability to enforce your rights through lawsuits are limited and can be much more costly or even impossible to prove.
No Public Record: Without registration, your trademark isn't easily discoverable in a database search. This means that others might unintentionally infringe upon your mark by deeming it available since they couldn't find it in the USPTO records.
No Presumed Ownership: If you need to enforce your trademark rights but haven't registered, you bear the burden of proof to demonstrate that you own the mark and have used it for the goods/services in question.
Loss of Opportunities for Expansion: Without nationwide protection, a business might encounter difficulty expanding its distribution and marketing into new regions if another company is using a confusingly similar mark.
Difficulty in Securing International Registration: If the business wants to expand abroad, they might struggle to secure international registration without a U.S. registration already in place.
Trademark registration offers a level of predictability and security for businesses that unregistered marks lack. Registration places the public on notice of the owner's claim to the mark, making it more difficult for others to claim ignorance as a defense to an infringement claim. Federal registration will benefit your business.
Best practices to maintain your trademark registration
After registration, your job is not complete. As a responsible trademark owner, you want to ensure your mark is as strong as it can be and that you do not lose any protection. This involves incorporating a few different practices in your use of the mark, such as:
Use It or Lose It: Make regular and continuous use of your trademark in connection with the goods or services for which it is registered. Inactivity can lead to a loss of your rights. When using the mark, always use it exactly as registered. If not, you could lose important protections.
Follow Proper Trademark Usage: Always use your trademark as an adjective, not as a noun or verb, to prevent it from becoming generic. For a great example of why, look here. Also, always use the correct trademark symbol (® for registered marks, ™ for unregistered).
Monitor Your Mark: Pay attention to the marketplace to detect any possible infringements. This can be done through various measures, such as setting up a Google Alert for your mark or using specialized monitoring services, or even some attorneys can offer this service.
Enforce Your Rights: It's crucial to address infringements promptly. This may require legal action such as a cease-and-desist letter or, in extreme cases, a lawsuit.
Renew Your Trademark: In the U.S., you must file specific documents with the USPTO to maintain your registration. These are typically due between the fifth and sixth year after registration, between the ninth and tenth year after registration, and every ten years thereafter.
Keep Your Registration Updated: If there are changes in ownership, name changes, or address changes, make sure to update your registration with the USPTO accordingly.
Record Licenses and Assignments: If you license your trademark to another entity or you assign your rights to someone else, those transactions should be properly recorded with the USPTO.
Remember, neglecting to properly maintain a trademark registration can result in the cancellation of the registration, leaving the mark unprotected at a nationwide level. Always consult with an attorney who specializes in trademark law when in doubt about maintaining trademark registration status to ensure all bases are covered.
The above information has provided a broad overview of what a trademark is, why you should get a federal registration for your mark, how you get a federal trademark registration and what you can do to protect your mark after registration. Should you need any further information on any step in the process or should you wish to have a local trademark attorney help you, please feel free to contact us here, or book a consultation online.