Establishing Trademark Rights
With the sheer volume of competition for attention in the marketplace today, the business and competitive value of a company's brands are of great importance. Brands allow a company to distinguish goods and services from competitors, signal the consistent quality of those goods and services, and build important goodwill with customers.
Establishing trademark rights involves several components. It begins with the creation and clearance of potential trademarks, which involves conducting searches to assess whether the marks are available for use, gauging potential risks or hurdles, and developing strategies to minimize or avoid those risks when possible.
Once cleared, registration of trademarks enhances your rights and lays the basis for exclusive nationwide protection. Given the value of trademarks, companies should maintain a robust program to cover the many aspects of brand protection, including proper use of trademarks by employees and third parties, adopting policies and procedures for social media use, monitoring and taking appropriate action against third parties for misuse or infringement of company trademarks and other intellectual property.
The TM Landscape
Trademark filings at the USPTO are reaching historical highs, which means that establishing and protecting strong brands is more competitive than ever. Having an experienced trademark attorney conduct thorough clearance searches and advise on strategies to establish and maintain trademark rights can make all the difference.
The USPTO will not register a mark that they consider “confusingly similar” to a previously registered mark. Therefore, it is important to conduct a search of the USPTO database prior to filing an application to determine the likelihood that it will be registrable.
It is also a good idea to search the internet for possible conflicts with marks that are being used but may not be federally registered. Having a professional search done will yield the most extensive results and provide the greatest peace of mind that your mark will not infringe on the rights of a 3rd party.
Trademark rights in the U.S. are obtained by being first to use a mark in commerce in connection with the relevant goods or services. It is not a legal requirement to register a trademark on the federal trademark register. Federal registration, however, provides the trademark owner with substantial benefits, including:
- Constructive nationwide right to use the mark;
- Federal court subject matter jurisdiction over infringement and other trademark claims;
- Statutory remedies for federal trademark infringement claims, including, under certain circumstances: treble damages;
- recovery of attorneys' fees and costs; Constructive notice of ownership, which eliminates the defenses of good faith use and innocent adoption;
- The right to use the ® symbol and other notices of federal registration;
- A registration may provide a basis for registering the mark in foreign countries.
- a registration may be recorded with US Customs to stop the importation of infringing, counterfeit, and gray market goods; and
After the application is filed, it is assigned to a trademark examining attorney at the USPTO who will review the application to determine whether: 1) The application meets formal examination requirements; 2) The trademark is distinctive and eligible for registration in accordance with the Lanham Act and the USPTO's regulations; or 3) The trademark is likely to cause confusion with any other previously applied for or registered trademark.
Once a mark is registered with the USPTO, the trademark owner is responsible for actively monitoring the federal trademark database as well as the marketplace in general to identify and defend against potential misuse (whether intentional or not) and infringement by confusingly similar marks. Pending trademark applications that are identified as being too similar to your registration can be opposed and or a cease and desist letter can be sent to third parties who are misusing or infringing your rights in the marketplace. The failure to oppose confusingly similar marks or defend against infringement will ultimately erode the strength of your trademark rights and potentially lead to a loss of rights entirely.
Due to this potential loss of rights, having monitoring and watching services in place can systematically identify and solve potential issues and minimize any damage as soon as possible. Crafted Law uses advanced trademark search software to regularly search for and identify objectionable trademarks, trade names, domain names, and other infringements on behalf of our clients.
Given the business and competitive importance of trademarks, companies should be prepared to take action to police and enforce against trademark misuse, including infringement (whether intentional or not), dilution, counterfeiting, or cybersquatting. With the volume of new and existing companies creating brands, launching products and services, and filing trademark registrations, sometimes these new trademarks will infringe on the rights of pre-existing trademarks with senior rights. Failure by the owner to take appropriate action can lead to the loss of valuable rights.
Regardless of the nature of the infringement, there is a trademark issue that needs to be solved. Ideally, disputes can be resolved out of court, avoiding costly legal and court fees. Crafted Law can help you identify creative strategies to address infringement and take action when necessary.