If you are looking to protect the intellectual property of your business, there are a number of steps you can take to make sure that your competitors cannot steal what you have worked hard to create. For example, you can protect any unique process or formula with a patent, while any printed works can be copyrighted. A trademark is somewhat different, as it will provide protection for a business name, product name, or slogan. An experienced intellectual property attorney can help your company by filing for trademark registration and, if necessary, bringing lawsuits for infringement.
What Is a Trademark?
A trademark is a name, word, logo, phrase or symbol that is used to identify a product or service. Some of the most famous ones are Coca-Cola and Starbucks. Not only will a trademark protect the name, but it will also protect the specific design. For example, the famous red, white, and blue logo of Pepsi Cola protects these colors and the unique font as well. A service mark is just like a trademark, but it is for a specific service, like Uber. These have the same protections as trademarks.
A similar protection to trademarks is for trade dress. This not only provides protection for the name, but also for how it is presented. A business can protect a unique bottle packaging used for its product. It can even get protection for how it is displayed, like the famous pocket tag on Levi’s jeans. The key is that the name has to be unique. You cannot trademark a name that is too generic, like calling your malt beverage “Beer” and not adding something unique, like Samuel Adams or Bud Lite.
Do I Need to Register My Trademark?
There is no requirement that you register your trademark. Once you begin using your product in public commerce, you automatically qualify for a common law trademark. This means that if you can prove you were the first to use the name, then you have protection against any competitor who may try to use the same or similar name. This is referred to as infringement. Unlike other types of property rights, trademark ownership is based on first to use, not first to register. So, if you plan to use your trademark only in your local area, you might consider forgoing the cost of filing for a registered trademark. Nevertheless, there are some strong reasons why you should consider registering any names you plan to use for your business and its products and services.
If a competitor infringes on your trademark, you will need to prove that you were the first to use this in actual commerce. The burden will be on you to prove this by a preponderance of evidence. However, if you have filed for or received a trademark registration from the United States Patent and Trademark Office (USPTO), this will be prima facie evidence of your first use.
There is another reason why you should consider registering your trademark. Under the Lanham Act, unregistered trademarks do not receive the same level of protection as those registered with the USPTO. As a result, you will only be considered to have a trademark for the geographic area in which your business operates, while registered trademarks get nationwide protection. This means that the damages you can get for infringement will be limited, so that you may not receive the full measure of damages under the Lanham Act, including an accounting for lost profits, attorney’s fees, and treble damages. In addition, if you plan to use your trademark overseas, you will need to register your trademark with the USPTO before you can apply for international protection under the Madrid Protocols.
What Is the Process for Obtaining a Registered Trademark?
There are a number of steps involved in filing for a registered trademark. The first is to conduct a nationwide search to make sure that no other business is currently using the same or similar name, particularly one engaged in the same business as you. In addition to checking the USPTO website, you can also use a number of other search engines for this process. Once you have determined that the name is available, you can begin the registration process on the USPTO website through the Trademark Electronic Application System (TEAS).
The TEAS system is fairly user friendly, but it is a good idea to have an experienced attorney assist you. You will need to decide whether you are using a stylized or specially designed mark or just having it displayed in standard characters. The application itself requires information about your business, as well as an identification of the products and services that will be covered by the trademark. The fees will be based on the number of different product and service categories. You will also need to show if you are currently using it in commerce by photographs of the product and trademark in use. If you are not currently using it, you will also need to file an intent to use, with a statement of use later on in the process.
After you have filed for registration, the application will be assigned to a USPTO examining attorney. This person will usually respond after a few months. In most cases, you will receive a letter with comments that you must respond to in a timely fashion. In a few cases, you may get a denial of your application, which will trigger your right to file an appeal with the Trademark Trial and Appeal Board (TTAB). Once you have satisfied the USPTO attorney that you have a right to register the trademark, the USPTO will publish the trademark in the Official Gazette.
Publication of the trademark is not the end of the process. Instead, this starts a thirty day period during which any party may file an objection to registration. If nobody objects in a timely fashion, then you will receive a registration certificate. If there is an objection, then this will be adjudicated before the TTAB. Even if you have received a registered trademark, you will still need to file for continued registrations during the period between the fifth and sixth year and the ninth and tenth year. In addition, you will need to monitor the trademark to ensure that nobody is infringing on your rights.
If You Are Considering Filing a Trademark for Your Business, Call Our Firm Today
Filing a trademark for a product or service helps protect your intellectual property rights. The experienced attorneys at Jones Gregg Creehan & Gerace, LLP can assist you with all of your trademark needs, guiding you through the process and providing you with protection against future infringements. Contact us today.