What Are The Benefits of Trademark Registration?
There are a number of benefits of registration. In the United States, these benefits include:
A registration creates a legal presumption that the mark is valid, the registrant owns and has exclusive rights to use the mark and that the mark is not confusingly similar to other prior-registered marks.
A registration gives its owner the benefit of “constructive use” throughout the United States and internationally for purposes of determining priority. A successful application to register a trademark filed today will prevent anyone else anywhere in the United States from being allowed to adopt a confusingly similar mark tomorrow.
Registrations diminish the likelihood that someone will adopt a confusingly similar mark because they will appear on search reports that entities review when someone is considering a particular mark.
- Registrants can bring suit in federal court and can recover treble damages under appropriate circumstances.
- Registrations can be used to block the importation of infringing products if registered with U.S. Customs.
- Registrations can secure bank loans.
- A registration may be helpful in domain name disputes.
Additionally, if you have an address on the Internet, it is often the case that a registration from any country can be used to fend off a request from a third party to have the domain name transferred to it or them or simply put on “hold” by the domain name registrar.
Registrations in one country can, in some cases, confer a priority or seniority rights to other international registrations. If you are using a mark internationally or have plans to do so in the future, you should strategize with trademark counsel about how to best take advantage of the various international treaties and the recently-created Community Trademark system.
How Long do Trademark Rights Last?
Generally, for as long as the mark is in use! Registrations, however, require regular upkeep. Registrations are valid for varying periods of time depending on the country and the date of the registration. A registration issuing in the United States today will be valid for ten years so long as an affidavit of continued use is filed between the fifth and sixth year. Docketing systems (Oppenheimer’s is fully computerized) are essential to maintain large (and even small) portfolios of trademark registrations.
Trademark Notice
Although notice is not required for legal protection, providing notice of trademark ownership in the prescribed statutory form is often helpful to deter potential infringers and to prove that an infringement was intentional (possibly entitling the owner to enhanced damages). However, sometimes providing incorrect notice can jeopardize your registration. In the United States, the registrant may use the symbol â only for a mark that is registered with the United States Patent and Trademark Office. The owner of an unregistered trademark may (and should) use the symbol ä . Using a ™ with a mark tells the world you consider it to be your trademark and may assist you in establishing future rights in questionable marks. These symbols are typically placed next to the most prominent use of the mark in a particular marketing document (you do not have to tag each and every use of the mark, but you should be consistent in your usage). You may wish to include additional notice of trademark ownership in brochures, advertising, product packaging and the like such as the statement “‘DOUBLE X‘ is a [registered] trademark of [company name].”
Correct Trademark Usage
It is important to use marks correctly as trademark rights are maintained only through proper and continuous use of the trademark in commerce. To protect marks, follow the following rules and guidelines:
Trademarks are adjectives. Use the trademark as an adjective followed by the generic or common descriptive name of the product (i.e., a noun) which the trademark modifies. A noun cannot be a trademark!
Be consistent. Use the trademark in a consistent manner. Do not use variations in punctuation or spelling, or abbreviate the trademark. A trademark is not a noun, and should not be made plural, used in the possessive, or used as a verb.
Distinguish trademarks. Use the trademark in a manner that distinguishes it from other material, by using UPPER CASE BOLD LETTERS, bold type, italics, underlining, LARGER print, a different type face, different color or the like.
Enforcement of Trademark Rights
How Do I Know If My Mark Is Being Infringed?
If you start getting calls or letters that customers, investors or others think you are associated with the owner of another trademark, contact counsel immediately. You should keep copies of misdirected mail and notes of conversations with anyone who has become confused. Many trademark owners regularly search the Internet to ensure that no one is using their marks in connection with similar goods or services. Finally, you can sign up for a “watch” service which will alert you to pending applications to register similar marks that can be challenged by instituting an opposition proceeding.
Why Should I Care?
Aside from the obvious disadvantages caused by a third party siphoning off your confused customers or harming your good name, third party use of confusingly similar marks can diminish your trademark rights. Trademarks become weak when they are merely one of a crowd of similar marks. The only way a trademark owner can prevent the market from becoming crowded with similar marks is to police adjacent “territory” and protest those who edge too close.
What Are The Penalties For Trademark Infringement?
Trademark owners can obtain an order requiring the infringer to stop using a confusingly similar mark. If circumstances warrant, a court may order corrective advertising. If the owner’s mark is registered, the owner can recover profits, damages and costs, and sometimes treble damages and attorneys fees as well, from an infringer. If the infringer has placed the trademark owner’s mark on counterfeit goods, the court may order seizure of the goods.
Responding to Accusations of Infringement
Consult Counsel
Any accusation of trademark infringement should be reviewed with legal counsel as soon as possible. Many accusations will come in the form of a cease and desist letter. Others may emerge via an opposition proceeding instituted against your application to register a particular trademark. If you are served with a complaint that commences a court action you may have as little as 20 days to respond or a judgment may be entered against you. Legal counsel can help you decide how to respond to a claim, in whatever form it takes. There are many possible defenses to a trademark infringement claim that are beyond the scope of this brief discussion of trademark basics, but legal counsel can help you determine if any may apply.
Licenses
If it is unlikely that you have a valid defense to an infringement claim you should consider contacting the trademark owner to seek a license to use the mark. Licenses can be complex contracts providing for royalties and specifying strict quality controls, and should be obtained in writing. As a license agreement will cause any goodwill associated with your efforts to inure to the benefit of the trademark owner, obtaining the help of counsel is always a good idea.
