What is a Registered Trademark?
The importance of the registered trademark is lost on many business owners. This is because the majority does not understand what a trademark stands for or has a very vague idea of the meaning of it. A trademark is a symbol, word, or words representing a company or product legally registered or established by use. A trademark embodies the business’ goodwill and reputation. The more reputation grows, the more valuable the brand represented by a trademark, will be. Similar to property rights, a trademark can be bought, sold, licensed or used as a security interest to secure a loan. Furthermore, a trademark never expires for as long as it is used for commerce in the United States.
In the United States, multiple layers of legislation protect a registered trademark. Primarily, trademarks are protected under the Lanham Trademark Act. The US Patent and Trademark Office is a federal agency that enforces Lanham Act and regulates the registration process. The registered trademark symbol (®) provides notice that the preceding word or symbol is a trademark or service mark that has been registered with a national trademark office.
At the state level, a trademark is protected by common law principles of unfair competition. Common law protection is limited in scope and only extends to the territory where the mark is used.
Why Register a Trademark?
The main benefit of registering a trademark on the federal level is the enforcement of the trademark rights granted by the Lanham Act. Statutory causes of action that could be brought by the owner of a trademark include: infringement (unauthorized use), counterfeiting (use of a substantially undistinguishable mark from the registered mark), trademark dilution (use of name that is likely to reduce public’s perception of a famous mark which signifies something unique), false advertising (false designation of origin, for example), passing off (false representation with intent to induce to believe that the goods or services are those or another).
It is important to understand that even without a registration the trademark is somewhat protected. State trademark registration is an alternative option available for business owners. Though state registration generally grants rights no greater than one could obtain under common law, the process is quick, easy and it does have certain benefits. It secures the mark’s placement in trademark reports and provides a notification to the third parties. If the business is at an early stage and there are no plans to go nationwide, the protection granted by the state is enough for a purely local business.
Federal registration allows the owner to have indisputable evidence of validity and ownership rights of the mark. Furthermore, under federal registration, a trademark falls under federal court subject matter jurisdiction over infringement and other trademark claims without showing diversity or minimum amount in controversy. Statutory remedies available for federal trademark infringement claims include treble damages and recovery of attorney’s fees. In addition, federal trademark provides grounds for registering the mark in foreign countries.
It is important to note that even if it may seem your business meets all the requirements for trademark, the registration of a mark is not guaranteed. Officers of the USPTO consider all federal trademark applications. It usually takes up to a year to finalize the process.
When to File a Trademark Registration
Trademark registration is important for business owners who are serious about their business and their brand. Every step you take to grow your business is an investment in your brand and you should secure it. To gain maximum legal protection, we recommend filing a trademark application soon after you start doing business. The trademark process takes more than 6 months so it’s best to get started early.
What Should be Included in the Trademark?
Any type of device used to identify the source or origin of a product or service can be registered as a trademark. It could be words, phrases, symbols, designs. Some trademark could also include, under certain circumstances, sounds, smells, colors and shapes. The main benefit of having it registered, is that it provides an exclusive right to the registered owner to use the trademark in connection with products and services covered by the mark. This helps to distinguish the origin and quality of the goods or services that may originate from different sources.
Requirements for Federal Trademark Registration
Initial requirements for the federal trademark protection include usage in the stream of commerce and distinctiveness. Furthermore, it shouldn’t include any deceptive terms or immoral language, and there shouldn’t be any similarities or confusion with other registered marks.
While the process of filing a trademark application may seem to be quite easy at the first, it can be a tedious process. The most tedious part of the process is the so called “trademark clearance”. An applicant has to conduct a very thorough search (Federal Trademark Register search, state trademark registers, various public sources) and proceed with a very detailed analysis to eliminate possible conflicts and issues with the application. An applicant or an attorney assisting with the application needs to evaluate if the proposed mark qualifies for trademark protection and federal registration. Conducting trademark clearance on initial stages helps to avoid or reduce investment in a trademark that is already unavailable.
A recent study which analyzed 25 years of USPTO data shows that applicants who used an attorney to file their trademark applications were 50% more likely to get their marks approved than those who applied without legal representation.
How does your company protect its trade secrets? Are you putting the effort in to have policies and procedures in place prior to disclosing trade secrets to employees, contractors, vendors, clients and business partners? Don’t wait until after someone infringes on your trademark to seek legal advice. Our firm can help you achieve trademark registration by ensuring all the requirements are met for filing.
If not, contact us today for a no-obligation assessment of your overall legal needs and risk management program. Call us at (832) 305-5529 or email us at firstname.lastname@example.org to schedule an appointment.
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