The United States Patent and Trademark Office defines a trademark as, “a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party over those of others.” A service mark is essentially the same except instead of identifying a good, it identifies the source of a service. Customary practice, however, is to refer to both trademarks and service marks as “trademarks.”
A product or service can have more than one trademark associated with it. The name and/or logo of the company offering a product or service may be a trademark if the company markets the product or service under its name. The family name and/or logo for a group of typically related products or services can be a trademark. The particular name or logo associated with a specific product can be a trademark.
Trademarks can extend beyond just mere words and logos to include a product’s look, packaging, colors, sounds and smells. Simply, anything that uniquely identifies a particular product or service is potentially amenable to being a trademark.
Choosing a trademark
Choosing a strong, defensible trademark can be more difficult than it might first appear. Picking the wrong mark can be costly not only in terms of future litigation costs, but also in the loss of goodwill associated with a particular brand. Weak trademarks can cause headaches years down the line when competitors seek to trade off of your hard-fought reputation and market presence.
Leyendecker & Lemire can review possible trademark names and logos before you commit to their use, advising you of the pros and cons associated with each. We can conduct clearance searches to help you assess both the probability of being able to obtain federal trademark registration as well assess the future risks of choosing a particular mark.
How do I protect my trademark?
The simple answer is that using the trademark in relation to goods and/or services immediately accrues common law trademark rights, although these rights and the extent of these rights can be very limited depending on a whole host of factors. Furthermore, using a trademark that is already in use and/or registered to someone else can result in a very costly dispute.
In most circumstances, federally registering a trademark makes the most sense. Federal registration, combined with use of the trademark, gives the mark’s owner the ability to prevent others from using the same or confusingly similar marks in relation to goods and/or services that are similar to the product and/or service for which the mark is registered.
The process of obtaining registration appears deceptively simple. One merely fills out an online form and pays the United States Patent and Trademark Office the required filing fee. However, the trademark application and registration process belies an extremely complex body of law that to a layperson can often be counterintuitive, defying common sense. If done wrong, the consequences can be significant and potentially damaging to a brand.
An experienced attorney who specializes in this complex area of law is invaluable in not only obtaining registration for a desired mark but also in advising the applicant up front to help avoid mistakes that could jeopardize registration.
As is typical, the process begins with meeting with one of our attorneys and discussing the desired trademark along with the manner in which the mark will be used. We may advise as to the specifics of the mark such as its descriptiveness and closeness to similar marks used by competitors, if known. Next, a clearance search is conducted to help ensure the mark is available for registration and to ascertain whether the mark might infringe a trademark held by someone else. If the search is clean, we will file an expertly prepared application. With a clean search report, most marks pass to allowance and eventual registration without difficulty, but for those that do not, we provide the know-how to challenge rejections and often overcome them. The end result in most circumstances is a strong trademark registration that gives our clients the ability to confidently grow their brands.
If someone else is using a similar mark to sell similar goods/services
The whole purpose of a having a trademark is to hinder or prevent competitors from using confusingly similar marks to market and sell their products effectively trading off on any brand recognition you have established in the marketplace. In fact, a trademark holder has a duty to police its mark lest the mark become generic and free for all to use in describing their similar goods and services.
At Leyendecker & Lemire, we can also help enforce your mark against infringers from sending cease and desist letters to negotiating resolution to disputes, often avoiding costly court battles, to litigating against the infringer in court. We leverage our extensive knowledge of trademark law to your maximum benefit to resolve a dispute as favorably and as inexpensively as possible.
If you have been accused of infringing another’s mark
Over the years, we have represented many clients who have received notice from other trademark holders alleging infringement. In many instances, our clients have been able to continue to use their marks despite the representation of the accusers and on occasion, we have been able to turn the tables when our client is in fact a senior user of a disputed mark. Even in the most dire situations, it is often possible to achieve satisfactory results for our clients wherein the negative impact of having to change a trademark is mitigated through financial enumeration.
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