If you’ve poured your heart and soul into creating an amazing idea, you need to protect it. Working with an intellectual property attorney is your first step in protecting your hard-earned and fought for work.
A trademark is a word, phrase, symbol, logo, and/ or design that identifies and distinguishes the source of goods of one company from another. Google and Volkswagen are examples of trademarks. Owning a trademark allows you to distinguish your goods from the goods of competitors.
It’s important to note that the term “service mark” is often used in conjunction with trademark, but it differs in the fact that it identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos.
Avoiding Costly Conflicts with a Trademark Search
The first part of registering a trademark should be a trademark search. Before you spend and time, effort, and money applying for a federal trademark, make sure the mark is available by contacting an intellectual property lawyer.
If you have plans of registering your trademark, you will want to check to see if there are similar marks that could potentially be confused with yours. A search can also be helpful in determining if there are potentially confusing trademarks already registered with the United States Patent and Trademark Office (USPTO) that could affect your chances of registering your own mark. If there are any potentially confusing or similar marks already in use by businesses-even if the marks haven’t been registered-these could affect your ability to register your trademark.
A trademark conflict can happen when one trademark is confusingly similar with another trademark that has already been registered and/or being used in commerce.
There are principal factors used to determine if a chance of confusion can occur. These principal factors include:
- similarity of the marks
- Any commercial relationship between the products and/or services that are being offered
In some cases, trademarks that may appear to be similar are able to coexist if they’re unlikely to confuse a consumer because they are in unrelated services or business sectors. While the mark may be similar, they are unlikely to cause consumer confusion because of this difference in business sectors.
Hiring an experience Intellectual Property attorney is your first step towards a cohesive and complete search of the mark you are registering.
Registering Name Does Not Automatically Mean Name is Trademarked
While use of a business name does not necessarily qualify as trademark, use of a business name as the source of goods or services may qualify it as both a business name and a trademark.
It’s common in most states and local jurisdictions that a business owner must register a business name, either as part of obtaining a certificate to do business or as an assumed name filing. Such is the case when you file for a corporation or limited liability company. During this process, you would select a name for the business entity.
If no other company has already applied for that name in that state, and you comply with all other requirements, the state will issue you a certificate and authorize you to do business under that name. However, a state’s authorization to form a business with a particular name does not inherently mean that you also have trademark rights. For this reason, other parties are able to try to prevent your use of the business name if they believe a likelihood of confusion exists with their current trademark.
Length of Term
Trademarks do not expire after a set term of years like patents and copyrights do, but they are based on actual “use” such as use in commerce and business. Therefore, a trademark can last forever as long as the business continues to use the mark in commerce to indicate the source of goods and services and as long as the trademark documents and fees are filed at regular intervals.
Registration is not mandatory for a trademark. A business is able to establish “common law” rights in a mark based solely on use of the mark in commerce. Common law rights may be afforded to any word, phrase, image, etc. that a business uses in commerce to identify itself, its goods, or its services. Such rights are granted automatically upon use of the trademark and are extended to whomever can prove the first actual use of the name/symbol/ whatever constitutes the mark in a given geographical area.
While common law is automatically put into place upon use of the mark, federal registration of a trademark with the United States Patent and Trademark Office (USPTO) has several advantages.
With federal registration, the public is on notice that you own the mark. The law presumes it is your trademark and thus, you gain the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Registration affords the owner of the trademark substantial additional rights not available under common law.
An advantage of registering your trademark is the ability to use a registered trademark symbol each time you use your trademark. The registration of your trademark ensures the greatest degree of protection possible for a domain name. By federally registering a mark, the owner of that mark is given preferential treatment if any domain name disputes are brought before the Internet Corporation for Assigning Names and Numbers (ICANN)
If registered with the USPTO, you may use the ® symbol after your mark. This registered symbol puts potential competitors on notice that should they infringe upon your mark, you have the right to file a federal trademark infringement action. If not yet registered, you may use TM for goods or SM for services, to indicate you have adopted this as a “common law” trademark or service mark. A TM or SM does not grant you the protection you would have through registering your trademark.
Registering a Trademark
Because of the complexities of registering a trademark, you’ll want to make sure your application is professionally prepared. Approval of a trademark (which includes a renewable 10-year term of validity) can take months or even years.
Applying to register your trademark with the USPTO begins a legal process. During this process, you must meet legal requirements and deadlines, and you must pay all required fees. Not all applications for trademarks are approved and registered. Once your trademark registers, you must meet additional legal requirements, pay required fees, and meet statutory deadlines to maintain your trademark registration and keep it active.
One of the main reasons you’ll want to register your trademark is to protect your product from infringement. Should your trademark be infringed upon, you’ll want to work with an intellectual property attorney. We prosecute trademark infringement on behalf of clients and also defend clients from trademark infringement lawsuits.
The skilled attorneys at Reilly Intellectual Property Law Firm will help you prepare and submit your work for trademark protection and will help protect you against any possible infringement claims.
Reilly Intellectual Property Law Firm
Reilly Intellectual Property Law Firm provides copyright services to protect the creative works that change and shape our world. We handle handles patents, trademarks, copyrights and licensing legal services in Denver. Our experienced attorneys provide strategic guidance as well as counsel regarding copyright enforcement and how to avoid possible infringement issues.
Our patent attorneys actively and aggressively represent plaintiffs and defendants in a wide variety of proceedings before courts both domestically and internationally. We provide solutions that anticipate our client’s need to protect their intellectual property so that their business thrives. We would love to work with you to develop a dynamic strategy that addresses your patent, trademark, copyright, and licensing concerns.