Considering Trademark Registration

Before filing a federal trademark application, here are a few considerations.

First, it is important to determined whether you actually want to register a trademark. Do you understand the difference between a trademark, copyright, and patent? Would common law trademark rights be sufficient? Is the word or phrase you want to register even protectable under trademark law?

Once you determine that a trademark is what you need, you need to identify what class of services and/or goods are relevant. You will generally pick an International Class based on the industry where your goods or services will be used.

You will need to establish a clear representation of the mark you want to register. Then, clearly and precisely identify the goods and/or services to which the mark will apply.

Finally, identify whether you are registering a mark for current use or the intent to use in the future.

The filing fee depends on the number of marks, classes and the version of the form being used. The fee cannot not be refunded, even if the trademark is not registered.

Many areas of law can be done on your own, but trademark registration involves many potential problems, so use of an experienced trademark attorney is recommended.

What is a Trademark?

It is your business identity expressed as a name, number, symbol, design, slogan, and three-dimensional marks (product shapes). Trademarks are applicable to products and service marks are applicable to services (collectively known as “marks”), both of which are treated identically under the law.

Trademarks as well as service marks are applicable to not-for-profit and for profit organizations, and the mark may be registered on the state or federal level, but since federal trademark law preempts state law, state trademark registration is usually of little or no value.

Uses of Trademarks

Trademarks serve as a source identifier to the world to prevent consumer confusion. A company’s intellectual property may be the most valuable asset it owns. Think of it this way: how else would consumers come to know your business identity if not through the name you promote? Trademarking a brand, slogan, or logo gives it protection in a wide variety of environments. For example, trademark protection is applied each time you use your mark in association with

  • a product
  • product packaging
  • stationary
  • website
  • signage
  • advertising materials
  • exhibit booths
  • domain names
  • meta tags

As your business evolves, so does the reputation or goodwill attached to your products and services. Trademark law provides your company with an important tool to protect your company’s brands.

Benefits of Trademark Registration

As your company establishes a good reputation, you will want to prevent competitors from using a similar name that could confuse your clients, target market, or the public at large. Federal trademark registration prevents others from using your name in a confusingly similar way.

Specifically, federal trademark registration provides the following benefits:

  • A federally registered trademark can be recorded with the United States Bureau of Customs to exclude the importation of goods with marks that infringe the mark
  • Claims as infringement of a federally registered trademark qualify for federal jurisdiction in United States federal court
  • Special statutory remedies are available for a federally registered trademark
  • Counterfeiting a federally registered trademark is a criminal offense
  • Federal trademark registration allows you to use the registration symbol
  • Federal trademark registration can be used as a basis for obtaining registration in foreign countries
  • Federal trademark registration establishes nationwide constructive notice to all others of your claim to the trademark
  • Federal trademark registration is prima facie evidence of your exclusive right to use the trademark
  • The right to use a trademark that has been registered and in use for five years becomes “incontestable” upon the filing of an affidavit (this is important)

Having a trademark that is “incontestable” is a big deal. In theory, incontestable means that the mark is immune from most legal challenges. In practice, incontestable means the trademark is somewhat difficult to contest.

First Use of a Mark

Companies may not use a mark that is already trademarked. In order to obtain a trademark, one requirement is that the person or company be the first to use that mark in the marketplace. Thus, as a general rule, a company may not trademark a mark that is already in use in the marketplace. Additionally, by using a mark that is already in the marketplace, a company may be liable for trademark infringement.

Infringing on an Existing Trademark

Use of a mark that is trademarked, without permission, infringes on that trademark. Use of a mark that is deceptively or confusingly similar to a trademark, without permission, infringes on that trademark. A person does not have to register a mark in order to have common law trademark rights. By simply being the first to use a mark in the marketplace, a person acquires a common law trademark in the county where the mark is used.

Proving Infringement on an Existing Trademark

To prove trademark infringement, a plaintiff must prove by a preponderance of the evidence (more likely than not) that the defendant used the plaintiff’s trademark, without the plaintiff’s permission, in commerce. For infringement, the use of this trademark means use in the form of a reproduction, copy, counterfeit, or colorable imitation of the plaintiff’s mark in connection with the distribution or advertisement of goods in a way that is likely to cause confusion as to the source of the goods. The infringing mark need not be an exact copy of the trademark.

When viewed in its entirety, if the mark used by the defendant is likely to cause confusion in the minds of reasonably prudent purchases or uses as to the source of the product in question, it infringes on the plaintiff’s trademark.

Other Ways to Infringe on an Existing Trademark

A person may also be liable for infringing upon the trademark of another by merely inducing another to infringe on the trademark. Even if a person did not know of an existing trademark, the person is liable for trademark infringement if the person should have known of it. Often this is determined by looking at whether a reasonable person would have known of it, were that person in the same situation.

Our Trademark Services

We take a strategic approach to protect the immediate and future rights of every client’s intellectual property. We consider intellectual property protection from the perspective of the business owner, and the value that intellectual property is to future revenue of the company. By exploring the benefits and risks of your alternatives, we will help to create a comprehensive, focused solution for your to protect your company’s intellectual property.

Contact an attorney in this area