Many companies and individuals work hard to develop a unique business name, product name, or logo. These words, phrases, or symbols are called trademarks. Trademarks are used to identify the source of a product or service.
Once you have put in that hard work to develop your trademark, how do you protect it from use by others in similar fields? The best way to do this is by registering your trademark with the United States Patent and Trademark Office (USPTO).
Why Should you Register your Trademark?
There are “common law rights” in a trademark that exist as soon as you start using the trademark in commerce. However, your rights are much stronger if you obtain a federal trademark registration instead of rely on your common law rights. You can generally only enforce your common law trademark rights in the geographic area where you are using the trademark. For instance, if you are using a trademark in Appleton, your common law rights may not guarantee protection against a competitor’s use of a similar mark in conjunction with similar goods or services in Milwaukee.
There is also a process to register a trademark or tradename with the Wisconsin Department of Financial Institutions, which provides public notice of your use of the trademark throughout the entire state. However, if you plan at any time in the future to expand your business outside of Wisconsin, you should consider filing a federal trademark instead.
Federal trademark registration offers numerous advantages and lays the basis for nationwide protection. These advantages include:
- Public notice of your claim of ownership of the trademark
- A legal presumption of your ownership of the trademark and your exclusive right to use the trademark nationwide on or in connection with the goods or services listed in the registration
- The ability to bring an action concerning your trademark in federal court, if you believe someone is infringing on your trademark rights
- The use of the U.S. registration as a basis for obtaining registration in foreign countries
- The ability to record the U.S. registration with the U.S. Customs and Border Protection service to prevent importation of infringing foreign goods
- The right to use the federal registration symbol ®
- A listing in the United State Patent and Trademark Office’s official online databases
Do Your Research
Federal registration is available only for trademarks used in interstate commerce. However, even for locally owned and operated businesses, many ventures qualify as interstate commerce – particularly with the use of a website to sell the goods or to promote the services.
Additionally, before attempting any use or registration of a trademark, it makes good sense to think about what you want your trademark to be. Not EVERY name, logo, or phrase is registerable, and some trademarks are more protectable than others. We use the trademark “spectrum of distinctiveness” to determine which trademarks are strongest and which are weakest, or not protectable at all. The graphic below illustrates which types of trademarks are the weakest (less protectable), and which are the strongest (more protectable).
Another crucial step in the process to register a federal trademark is to research and verify the availability of the trademark. Before adopting, using and attempting to register a trademark, it is advisable to conduct a comprehensive review of the USPTO registry, state trademark and tradename registrars, and common law indicators of trademark rights – such as websites (Google, Bing, Facebook, LinkedIn, etc.), magazines and newspapers, and internet domain names. The best search will be one that identifies not only identical trademarks, but also variant spellings, phonetic equivalents, and similar trademarks. This is important because infringement can occur with the use of a trademark that is not identical, but is similar.
Once armed with a registration, it is important to use the name, phrase, or logo exactly as registered with no variation. Also, be sure to use the symbol ® immediately following the trademark. This is an indication of the federal registration. It not only serves as a warning to potential infringers, but it is also required in order to collect money damages for infringing acts which occur prior to the infringer having actual notice of the federal trademark registration.
The federal trademark registration process can be complicated, and will be the subject of a future article. However, it can also be worth the effort when you feel you have a business or product name, or logo that distinctly identifies your business, goods, or services.
Please contact McCarty Law’s Trademark & Intellectual Property Lawyers to assist with your needs.
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