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Intellectual Property Basics Series: Trademarks

Posted by Res Nova Law | Mar 22, 2021 | 0 Comments

What should I do to protect the goods and/or services associated with my business?

You may want to consider filing a federal trademark application if you haven't done so yet. A trademark is any symbol, word, slogan, design, or any combination associated with your particular goods and/or services. A trademark can also be a sound, color, or smell. Anything can be considered a trademark if it helps avoid confusion among consumers by distinguishing your specific goods and services from that of others.

You can establish common law rights without federal registration in a mark based solely on the prior use of it in commerce in a particular geographic location; however, these rights are restricted to the region in which you make such use and, therefore, not as widely enforceable as a federally registered trademark.  

Although federal registration of a trademark is not mandatory, there are many advantages. First, there will be a legal presumption of your ownership of the trademark and you will have the exclusive right to use the trademark nationally. Based on your registration, the USPTO will refuse to register the same or a substantially similar mark used on related goods or services. Second, registration will give you the ability to have the U.S. Customs Service block the importation of infringing goods into the U.S. Third, you will be able to use the U.S. registration as a basis to obtain trademark registration in foreign countries and fourth, you will have the right to use the federal registration symbol ® in connection with your goods or services.

Do I have a trademark if I have secured a domain name?

No, securing a web address does not mean you automatically have trademark rights. While you can build trademark rights in your domain name through use over time or by registration, if your domain contains someone else's trademark your use is potentially infringing and could result in the surrender of the domain to the other party. Such a result can end up costing you significant time and money. By carrying out a comprehensive trademark search prior to selecting a domain name, you can ensure that you are not infringing others' rights and that you will be able to continue using the domain name.

Do I have trademark rights if my business name is registered?

Similar to domain names, a business name registration does not automatically grant you trademark rights. Many states require registration of business names as either a part of obtaining a certificate to do business or as an assumed name filing, but this does not grant you trademark rights since the state is simply allowing you to do business under that name.

If your business name infringes upon another's trademark, that party could later try to prevent your use of the business name. By carrying out a comprehensive trademark search prior to selecting and registering a business name, you can help avoid costly issues that may arise through your use of a business name.

How do I select a good mark for federal registration?

First, you want to minimize the likelihood of confusion between your mark and those that are already registered by another party. You can do this by making sure your mark and the goods and/or services of another are not similar enough to make consumers believe that they come from the same source. The trademarks do not need to be identical but will be considered similar if the marks sound alike when spoken, are visually similar, have the same meaning (even in translation), and/or create the same general impression in the consuming public's mind. Nevertheless, two identical marks can coexist as long as the goods and services of both are not related.

Second, you want to select a mark that most easily allows you to prevent third-party use of your mark. The strongest marks and easiest to protect are fanciful,  i.e., invented words with no dictionary or other known meaning; or arbitrary, ones that are actual words for which the known meaning does not have a relationship with the goods protected. Suggestive marks are also registrable and they suggest, but do not describe , qualities, or connections to the goods and/or services. Descriptive words that describe the goods and/or services are more difficult to protect and might not be registrable unless the mark has acquired distinctiveness through extensive use in commerce over a five year period or longer. Generic terms are never registrable or enforceable against third parties because they are common, everyday names for goods and/or services. If you adopt a generic term for your goods and/or services, you will not be able to prevent others from using it.

Third, you should consider whether the public will remember and be able to pronounce or spell your trademark. If it's hard to recall or spell, it will be difficult to build up an association between the mark and your business.

Finally, if you are considering marketing your goods and/or services outside of the United States, you should consider whether the mark might have another meaning when translated into a foreign language in case the translated word is offensive or non-sensical.

How to register? 

You can apply for registration of your trademarks at https://www.uspto.gov/. However, in order to avoid mistakes that might cost you dearly in the future and risk losing your IP rights, we highly recommend that you consult with an experienced IP lawyer prior to application. Res Nova Law attorneys can help you with that or we can refer you on if it's not a good fit. 

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