Navigating the complexities of trademark protection can be daunting, but understanding the fundamental principles is crucial for safeguarding your brand. Whether you're a startup launching a new product or expanding your small business, knowing how to effectively protect your trademarks can prevent costly legal disputes and ensure your brand's longevity. Here are five essential insights to help you effectively navigate the trademark protection process:
5. There are two ways to obtain trademark protection.
Trademark protection is rooted in the Commerce Clause of the Constitution. The first way a trademark obtains protection is through common law. This protection arises as soon as the mark is used in commerce on the goods or services with which it is associated. However, this protection is limited to the geographic area in which you are actually using the mark; it cannot prevent someone from using the mark in another state if you don’t have a presence there. Some states allow for registration of trademarks, but protection is still limited to that particular state.
If you are looking for broader protection, you can seek federal registration of the mark. After filing an application with the U.S. Patent and Trademark Office (USPTO), an examiner will review the application to determine if the mark can be registered. If the examiner determines the trademark can be protected, the mark is then published in the Official Gazette. Anyone who would be damaged by the registration of the trademark, such as if it is similar or the same as another mark already in use, can oppose the proposed trademark prior to registration. If no one objects, then the mark will proceed to registration.
4. You can’t obtain protection for anything you want.
Trademark protection is reserved for those marks that are fanciful, arbitrary, or suggestive, as those particular marks are automatically considered to be distinctive. You may also seek protection for a mark that is descriptive provided such mark has acquired secondary meaning. Acquisition of secondary meaning usually takes many years and requires submission of evidence of such meaning, like consumer surveys and advertisements that connect the mark with the goods and services.
However, you cannot protect a mark that is generic. A mark is generic if it refers to or is understood as referring to the genus of which the particular product is a species. In other words, you cannot seek protection for the mark “Shoes” if you are planning on selling flip-flops.
Likewise, you cannot protect a mark that is factually inaccurate. For example, there is no protection for a mark that is deceptively misleading (using the term lamb for a fake sheepskin product) or is misleading as to the origin of the goods (using the name of a place in Cuba for cigars made with Cuban seed tobacco, but not actually made in that country).
While in the last few years the Supreme Court struck down prohibitions on registrations of immoral and scandalous marks due to First Amendment considerations, there is still prohibition on registrations for marks related to drug paraphernalia, which may affect registrations of marks related to cannabis.
3. You can trademark more than just a word or logo.
Provided there is an association between the mark and the goods and services, you may obtain protection over other elements of a mark separate from the word or design, such as scent (such as Play Doh) or sound (such as the three chimes for NBC). Similarly, packaging, product design, features, and colors may be protectable as trade dress (think, Cracker Barrel).
However, the trade dress cannot be functional. In other words, it cannot serve a specific purpose in the use of the goods. A cleaning products company cannot obtain protection for the product design of a spray bottle where the design is what makes the bottle work.
2. If two people are using the same mark, the person with priority of use wins.
Sometimes, owners come up with the same mark for their goods or services. It is conceivable that a company in Ohio could be using the same mark as a company in New York. If the company in New York began using the mark before the company in Ohio, the New York company has priority and can block the registration of the Ohio company’s mark. When choosing a mark, it is important to at least conduct an internet search to avoid any possible infringement or priority issues.
Likewise, overseas companies, particularly those registered under the Madrid Protocol, should conduct a similar search and consider narrowly tailoring their goods and services description to avoid any priority issues.
Should there be similar marks, but the owners agree that registration of both marks would not confuse consumer, the owners may enter a concurrent use agreement, which may limit the use of their respective marks to certain industries or territories. However, this agreement will likely come with a price, so it behooves you to do a search and engage with a knowledgeable attorney prior to submitting an application to avoid this issue.
1. You can lose trademark protection if you fail to use or pay attention to your mark.
Trademark protection is based on the exclusive use of a mark, meaning use by the owner and those who have the owner’s legal permission under a licensing agreement. An owner can lose protection of that mark if they fail to (1) use the mark at all or (2) “police” the mark.
If an owner fails to submit the required maintenance documentation for a mark, the USPTO will consider the mark abandoned. Likewise, if a mark remains unused in commerce for three years, a third party may petition the USPTO to consider the mark abandoned. An owner may revive the mark, provided they can show that use in commerce. If the owner cannot produce such evidence, the protection for the mark is lost. Often, an owner is using a mark in commerce in relation to goods and services, but it is not the same mark which is registered. Make sure you and your licensees are using the correct mark to avoid any abandonment issues.
When policing a mark, an owner must be aware of two things: (1) who is using the mark; and (2) how the public is using the mark. An owner can lose protection if they fail to stop those who are using the mark without permission, as well as those who are using a form of the mark to somehow associate their goods or services with those of the owner. In the same manner , an owner can lose protection if they fail to ensure the proper quality of goods or services from those who have permission to use the mark, such as manufacturers, suppliers, or franchisees.
Moreover, an owner will lose protection if they allow the public to use the mark in such a manner that it becomes generic. “Generocide” is a double-edged sword: a mark can become so pervasive that people know it without reference to its specific associated goods or services, but then becomes so common place that it unexpectedly erodes off the protectable scale. Marks that have lost their protection over the years include Aspirin, Dry ice, Escalator, and Trampoline.
Thinking about protecting your trademarks and have questions- schedule a consultation today!
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