A trademark is any word, design, or phrase used to signify the source of goods or services. In a nutshell, a trademark is a brand identifier. Businesses, and especially small businesses, are encouraged to apply for a federal trademark to protect their brands.
Trademarks benefit both businesses and consumers. Trademarks allow consumers to easily recognize the origins of a product or service. For example, a customer might look for a swoosh, or a special pattern of lines, instead of inquiring about who made a certain sports shoe. Trademarks encourage suppliers to invest in the accuracy of their products and services. Trademark legislation helps to achieve these aims by restricting how trademarks can be used.
Benefits of Registering a Trademark
Trademark registration affords national ownership and the right to use the mark anywhere in the United States. If you do not register for a trademark, you will be limited to your current geographical location. A common goal is to grow a business as much as possible. This can mean multiple locations and markets. However, if someone else registers a trademark similar to your own, you can be prevented from expanding into new locations and online.
Trademark registration also has litigation benefits including reducing trial costs, and access to federal court. A party can potentially be awarded damages, attorneys’ fees, and other remedies.
Further, registered trademarks may become “incontestable” after five years.
A mark must be unique to serve as a trademark; that is, it must be capable of distinguishing the source of a specific product or service.
There are 4 types of marks:
Since the distinctiveness of the marks in each of these groups varies, the criteria for, and degree of, legal protection afforded to a specific trademark can differ depending on the group.
Acquiring Trademark Rights
If a trademark qualifies for registration, the rights may be acquired in either two ways:
- First to use the trademark in commerce
- First to file a trademark application with the United States Patent and Trademark Office (“USPTO”).
However, keep in mind that descriptive marks can only be protected (and registered) once they have acquired secondary meaning. As a result, there can be a length of time between the first usage in commerce and the acquisition of secondary meaning during which it is not eligible for trademark protection.
Trademark Infringement & Dilution
If a party holds trademark rights, the party can sue other parties for trademark infringement. The court will determine whether the two marks are likely to cause consumer confusion as to the origins of the product or service by analyzing:
- The strength of the mark
- The products proximity
- The resemblance of the marks
- Evidence of actual confusion
- The similarity of marketing platforms
- The defendant’s motive
- The degree of caution exercised by the typical purchaser
Courts also award special protection to marks that are deemed “famous.”
In a trademark infringement or dilution case, a defendant may invoke either fair use or parody.
Altogether, a federal trademark is a valuable asset to businesses. The likelihood of successfully registering and defending a mark largely depends upon whether the owner is represented by an experienced attorney.
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