Brand value can be crucial to your business. It is what differentiates your business from competitors. Brand alone has value, and much of the worth of a company can be tied up in brand and how the business is perceived. Every business has a unique way of being identified in their customers’ minds that can include one or more of:
- Words
- Phrases
- Symbols
- Designs
- Any combination of these things
Trademark law and trademark registration can help protect your trademarks and brand identity from confusing imitation by competitors.
Why You Need a Trademark
A trademark can serve several purposes, including:
- Identifying the source of your company’s goods
- Legal protection for your brand
- Protection from those who would counterfeit your products and services
Creating a good trademark and protecting it can be essential to prevent competitors from capitalizing on your goodwill and brand identity.
There Are Limits to Trademark Rights
A trademark does not give unlimited control over a word or phrase, but you do control the association of the trademark with your business when the trademark is used with your goods and services. For example, Coca-Cola has a trademark for the distinctive script that it uses to spell its product and the shape of its bottles. People associate the white and red circles within circles with the Target brand - the reason why is that these symbols and shaped bottles are trademarks that identify those goods with the source. Trademark law allows the trademark owner to take steps to prevent others from using their trademarks in goods or services that are related to the trademark owner. If a third party does this in a way that is likely to confuse consumers as to the source of goods or services, then that third party may be liable for legal damages for trademark infringement.
Using a trademark in commerce with goods or services creates common law trademark rights for the trademark owner. In addition, further protection can be obtained for the trademark by registering the trademark with the United States Patent and Trademark Office. Registering the trademark can be useful as it provides notice to others when they might be adopting a new trademark, and therefore can act as a scarecrow to drive off competition before they adopt an infringing trademark. Registering a trademark also can strengthen the protection of that trademark by extending area of coverage to the U.S. national borders rather than just areas of use of the mark, and also creates potential statutory damages that might not be available if the mark were not registered.
The Trademark Registration Process with the USPTO
The process for registering a trademark is much different than applying for a patent. An application to register a trademark must identify the trademark and the goods and services with which the trademark is or will be used. If the trademark is already in use, then the application can also include a sample or specimen showing how the trademark is used, as well as an indication to when the trademark was first used. Before filing a trademark application, it may be helpful to perform an extensive search to find what other entities are doing that might be similar to the intended trademark. Searching can be done in any of numerous different databases and other sources to determine whether someone else owns that trademark or something similar. A search before getting too far into the trademark process can help to identify potential issues early in the process while it is still relatively less burdensome to make changes if needed.
The USPTO will assign a trademark examiner to review your application. They will reach a determination of whether it meets legal requirements. They could deny your application if:
- You are trying to register a phrase that is generic or commonly used with respect to the goods or services
- Someone else already owns the trademark or a trademark that is confusingly similar
- The goods and/or services are not clearly identified
How a Trademark Attorney Can Help You
There may be other errors identified by an examiner that may be fixed in discussions and amendments to your application. Hiring an experienced trademark attorney reduces the chances of an error derailing your trademark application. A trademark attorney can do the following for you:
- Search relevant databases for similar trademarks
- Ensure that your application does not have critical errors
- Correspond with the examiner if they have any concerns about your application
- File an appeal with the Trademark Trial and Appeal Board if your application is denied
In most cases, in order to secure a trademark registration, you must be using the trademark in U.S. commerce. Trademarks are considered “use or lose.” If you do not make use of the trademark, you may not be able to enforce your trademark rights and your trademark registration can be canceled. Trademark registrations must be maintained by submitting periodic documentation to the USPTO showing that the trademark is still in use, and paying USPTO fees. Thus, there are ongoing obligations to maintain a trademark registration.
What You Need to Know About Trademark Infringement Lawsuits
Once a trademark registration is granted, and even before the registration is granted, there may be issues when someone else who does not own the trademark attempts to use it. Then, the trademark owner may file a lawsuit to enforce their trademark rights. Before registration, the trademark can be enforced under common law trademark provisions. After registration, the remedies of the trademark owner are strengthened, and there are more chances to enforce in Federal Court if desired.
Trademark owners would seek the following in a lawsuit:
- An injunction to put a stop to the unlawful use of the trademark
- Monetary damages for the harm suffered from the infringement
Trademark infringement lawsuits have high stakes for both parties involved. If you are a trademark owner, your business identity is on the line because your trademark can be worth a lot of money and unauthorized use of the trademark can harm your reputation and siphon away business. If you have been accused of trademark infringement, you can be liable for significant damages, and injunctive relief can disrupt your business. If the court determines that you have willfully infringed a trademark, you can be liable for enhanced damages.