Are Your Trademarks Protected?

One of the most critical steps in forming a new business or developing a new product or service is securing complete trademark protection. Yet, all too often, business owners fail to put the necessary "up front" investment into protecting their product or service. Understanding trademark basics is an essential component of running a successful business.

What is a trademark? The U.S. Patent and Trademark Office ("USPTO") identifies a trademark as "a word, phrase, symbol, or design, or a combination [thereof], that identifies and distinguishes the source of the goods of one party from those of another." Trademarks include names used to identify both goods and services. They are generally identified as either "inherently distinctive" or "not-inherently distinctive." Inherently distinctive marks are those that are fanciful, arbitrary, or suggestive in relation to the products or services with which the mark is used. Simply put, these are the "most unique" marks. As such, they are given the broadest protection under the law. Marks that are not-inherently distinctive include descriptive marks, such as those that identify or describe the goods or their attributes. These marks are protected under the law, but not necessarily to the same extent as "inherently distinctive" marks. Terms such as café, restaurant, pub, coffee, dining, etc are not protected as trademarks, since they are considered "generic" terms not entitled to proprietary protection.

What are the "basics" you should know about registration? Before choosing a trade name, it is important that the appropriate trademark research is conducted. This includes, at the very least, searching the U.S. Patent and Trademark Office database for any similarly registered names. If your mark has not been registered, you can apply for registration with the USPTO, although it is not a requirement for your business to register a trade name. The mere use of the name will provide you "common law" trademark protection. "Common law" trademark protection is based upon the "first in use" principle, meaning that the first business to use the mark has the rights to that mark.

Why register your trademark? Registration of your mark may prevent potential users of the same or similar mark from diluting the uniqueness of your brand. It also provides a presumption of trademark validity. A competing business challenging the validity of the trademark rights bears the burden of proving that the rights do not exist. If a mark only has "common law" protection, it is much more difficult to prove entitlement to the mark. Additionally, in litigation involving a registered mark, an infringing party is subject to monetary damages, including attorneys' fees and costs.

There are numerous other issues involved in trademark protection and registration, resulting in a large body of federal and state law. Therefore, to ensure complete trademark protection, it is important for businesses to consult with a qualified trademark attorney. Quality legal representation can safeguard the substantial investment into your unique goods and services.

With broad industry knowledge and experience in a variety of practice areas, we offer solutions that address each client's particular needs and objectives.

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