Trademarks protect the names and identifying marks of products and companies, such as logos and slogans. Unlike patents, in the United States a business does not have to file paperwork with the government in order for identifying marks to be trademarked. A common law mark is automatically assumed in the geographic area the mark was used once a business begins using a certain mark in the United States to identify itself and the business may use the symbol TM without filing any sort of form. However, there are significant benefits from registering marks.
When you’ve invested your time and money into building a commercial brand, protecting your trademark is essential to protect your investment. To do so, you need both a good offense and a good defense.
Your offense entails choosing a business name, slogan, or logo that you like and that you will be able to protect. Take the time up front to identify a strong trademark that will be hard for competitors to steal, ensure the mark isn’t currently used for the same goods and/or services of a competitor and then file for trademark protection with the USPTO.
Start Strong with a Good Offense
Pick a trademark with the strongest possible legal status. Your chances of being able to protect your trademark are much better if you pick a unique name for your business. Generic words like “sandwich” cannot be protected with a trademark. Descriptive and suggestive names, such as “Pasta Pomodoro” for a chain of Italian restaurants, have stronger trademark protection. The strongest protection comes with trademarks that are considered “fanciful”, “arbitrary” or taken out of context. Think: Apple computers, Verizon or the brand names of almost any pharmaceutical. Trademarks can also include designs as well.
Once you’ve chosen a trademark that you love, your next step is to make sure no one else is already using it for similar goods and/or services. It’s quick and easy to search registered trademarks on the USPTO website, but you won’t find common-law trademarks there—businesses with a legal right to a name in a geographic area because they were the first to use it, even though they may never have registered it. This is where it’s in your best interest to work with an experienced IP attorney who knows how to do a more thorough search.
The defense begins after you’ve started using your trademark, and it involves three strategies: using your trademark correctly, monitoring for potential infringements and standing up to those who tread on your property (“infringers”).
Step 1: Using your Mark Correctly
Once you’ve started using a mark with your goods (trademark) or services (service mark), let others know that your brand is protected by displaying the sign of your trademark—a little R in a circle for federally-registered marks, TM for common-law trademarks, and SM for common-law service marks—on your products and marketing materials. Don’t worry, you don’t need to include that little SM, TM or R every time you use the mark, but you do need to display it occasionally and prominently. In written documents such as articles, press releases and promotional materials it is only necessary to use the “R” with the first use of the mark.
In addition, it is important to use your mark with the goods and/or services you’ve applied to register the mark with. Using the mark with other goods and services will not be useful in registering your mark with the USPTO for the claimed goods or services.
Step 2: Do Some Policework
The best way to protect your mark is to consistently monitor the phrases and images other companies, especially your competitors, are using to promote their products. This won’t be as cumbersome as you might expect. You’ll be doing a lot of this already during the normal course of business as you keep an eye on what your competitors are doing.
You can also set Google Alerts to notify you on an ongoing basis about news stories and web sites that mention your trademark, misspelled versions of your trademark and phrases similar to your trademark.
Step 3: Stand Your Ground
If you think someone is infringing on your trademark, you have to decide whether or not you want to go after them to stop them, and how aggressively you’ll pursue them. Your response will probably depend on how serious the infringement is, the strength of your trademark and also your budget and resources.
One helpful strategy is to develop in advance a hierarchy of which kinds of threats are most damaging to your business. If you own a restaurant called Joe’s Barbecue and you see someone selling a product called Joe’s Pickles, it might be worth going after them if you eventually want to sell menu items from your restaurant in grocery stores. But, if you only plan to operate a restaurant, going after the pickle company probably won’t be worth your time and expense.
If you decide to enforce your mark, your lawyer can draft a cease-and-desist letter to send to the violator; a letter informing the violator of your marks and demanding that they stop using confusingly similar marks for similar goods and/or services.
Maintaining your Trademark
Once the USPTO registers your mark, you should maintain your mark by timely filing the necessary renewal forms and sample of use and paying the renewal fees to the USPTO as required. Generally, this occurs between the 5th and 6th year after the mark has been registered and between the 9th and 10th year after the mark was first registered and thereafter. This is the strongest way to protect your investment. If you fail to maintain your mark, the registration will be abandoned. After five years of continuous use you may also want to make your mark incontestable.
Contact a Washington DC Trademark Attorney
Don’t gamble with your brand! An experienced trademark attorney can help to ensure your trademark is protected and maintained. Call today to schedule a consultation.