A Guide to Trademarking
A trademark is a right granted by a government entity used to prevent others from using a confusingly similar mark.
Trademarks (for products) and service marks (for services) are words, names, symbols, or devices used by owners of goods or services to identify their goods and services, and to distinguish their goods and services from goods offered and sold by others.
Trademarks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic.
The trademark you choose must be suitable for registration and legal protection. If your mark is easily confused with another trademark, the USPTO (United States Patent and Trademark Office) will reject it. The agency decides whether your mark closely resembles another business’s and whether your goods or services are so similar to someone else’s that consumers are likely to think they’re from the same source.
In the United States, trademark rights exist only when the owner has actually used the trademark in the sale or offering for sale of goods.
Trademark law in general, whether federal or state, protects a trademark owner’s commercial identity (goodwill, reputation, and investment in advertising) by giving the trademark owner the exclusive right to use the trademark on the type of goods or services for which the owner is using the trademark.
Trademarks used in commerce may be registered with the United States Patent & Trademark Office (USPTO).
A trademark, does not prevent others from making the same goods or from selling the same goods or services under a clearly different mark; that’s what patents are for.
Outside the US, all trademark protection is on a country by country basis. Your company should attempt to register in all countries where you intend to do business.
Your protection strategy should include standards and guidelines for proper use of your trademark by your company, employees and the public, in any marketing, promotional and journalistic activities.
Any person who uses a trademark in connection with goods or services in a way that is likely to cause confusion is considered an infringer.
Trademark owners may obtain injunctions against the confusing use of their trademarks by others, and if the trademark is properly filed, they may collect damages for infringement.
For further information, the United States Patent and Trademark Office (USPTO) publishes an excellent introductory pamphlet called “Basic Facts About Registering a Trademark”; it contains all the information you need about obtaining a federal trademark registration.
Benefits of a U.S. trademark registration include:
Allows a successful trademark owner to recover attorney’s fees in litigation.
- Availability of statutory damages.
- Discourages counterfeiting and impostors.
- Nationwide exclusive use of a mark in registered classes against potential subsequent users.
- Facilitates licensing.
- Creates a legal presumption of ownership.
- Constructive notice to the public of use and ownership.
- Jurisdiction in federal courts to bring a lawsuit.
- If you discover signs of infringement you need to take legal action. (If you fail to stop the infringement, you risk doing what the USPTO calls “abandoning” your trademark. Abandonment allows someone else to claim the use of your trademark or to place it into the public domain.)
- A trademark can be a very valuable intangible asset for a company.
Nowadays, due to technology development and expansive advertising, a ‘branded’ trademark is an asset often far more precious than almost any other belonging to the company.
Intellectual Pats has attorneys experienced in trademarking for companies from Fortune 500 firms to start-up businesses around the world. We would be glad to provide our experienced professionals to help you protect your trademark. Give us a call today.
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