Trademark Attorney Answers Your Questions About Obtaining and Enforcing a Mark
You work hard at your business. Protect your products, services and your good name with a registered trademark or service mark. In this post, we’ll explain the basics of trademark/service mark registration and how you can enforce your rights in your mark.
What is a trademark/service mark?
A trademark (TM) or service mark (SM) (a “mark”) is, essentially, a brand name. The use of the TM or SM itself signifies ownership. A trademark or service mark is a word, phrase, slogan, symbol, design, or some combination of these that identifies the source of the goods and services of one owner and distinguishes them from the goods and services of another.
Why is federal registration of a trademark or service mark important?
While federal registration of a trademark or service mark at the U.S. Patent and Trademark Office (the USPTO) is not mandatory, it has its advantages. The TM and SM designation provides one level of notice to the public about your claim to the mark. It may deter some infringers, but it will not help you enforce your mark if you need to. Registering your TM or SM with the USPTO means that you can enforce your mark throughout the US. It is the only way you will be able to challenge infringers here. There are no criminal statutes for infringing intellectual property, such as patents, trademarks, or copyrights, and the USPTO will not enforce patents and trademarks for their owners. You must be pro-active to protect your mark. You can also use your registration of the mark as a basis to obtain registration in foreign countries, and file with the US Customs Service to prevent importation of infringing foreign goods. Both may be important for enforcing your mark.
You may not use the ® symbol with your mark while your application for registration is pending; however, once your mark is registered with the USPTO, you may use the ® symbol as a designation to put the public on notice that you have an exclusive right to use that mark nationwide. You may also enforce your right to the mark in the federal court system against others who would use the mark. You may use the ® symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration database.
How do I register a mark?
If you have a business name or a domain name – even if it is registered with the state – you may be surprised to learn that this does not mean that you have a TM or SM, or that you could enforce either of them. In addition, an application for a TM or SM at the USPTO does not guarantee registration. The process can be complicated, and you will improve your chances of success if you enlist the help of an experienced trademark attorney. A trademark attorney will know how to:
(1) conduct a pre-application clearance search and interpret the results;
(2) navigate the application process, which can be fraught with pitfalls; and
(3) explain and enforce the full scope of your rights in relation to the mark.
What circumstances might require action to protect my mark?
Is the mark you have registered used on goods or services of your competitors? Would consumers likely be confused between your mark and that of others? Is the mark used in the same geographic area or is used on related goods or services (even if they don’t compete in the marketplace)? Is your competitor using your mark or a very similar mark in the same market? All of these questions can bear on your ability to enforce your mark.
How can I protect my mark?
Use the mark. Even if you never actually sell anything bearing the mark, you should use the mark. What is important is that you offer goods or services under this mark to the public. Even if you have not registered the mark to use the ® symbol, you only need to use your mark, without any other TM or SM designation, to claim ownership in it.
Reserve the mark. You can reserve the mark for future use — as a placeholder of sorts. An “intent to use” registration at the USPTO can help you hold the mark for the product or service idea you have in your head, but won’t be able to produce for another year. You have a limited amount of time to actually use the mark after filing for the “intent to use” registration, and when you first use the mark, your use is back-dated to the filing of the “intent to use” registration.
Be vigilant and proactive. To keep others from using your mark, you or your trademark attorney will need to send “cease and desist” letters to the potential infringers. These letters constitute a demand that the infringers stop using your mark. If the infringers continue to use your mark, the next step is to file a lawsuit.
What remedies are available to me for infringement on my mark?
If the defendant is found to have infringed, the court will issue an injunction (a formal order) to require the infringer stop using the mark. Depending on how widespread the infringement is, you may be able to file in state or federal court. If you or your business has suffered monetary losses as a result of the infringement of the mark, and your trademark attorney can prove these losses, you also may be entitled to monetary compensation. Profits earned by the infringer may be payable to you if the infringer knew (or should have known) of your mark and intentionally copied it. The defendant also may be required to pay fines and your attorneys’ fees.
The laws governing trademarks and service marks are complicated, and the procedures for registering a mark are littered with traps for the inexperienced or unwary. To ensure your mark is protected or to enforce your mark, work with an experienced trademark attorney. For a free initial consultation, call us today or use the contact form on this page to tell us about your situation.