By: Kennington Groff
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. In simpler terms, a trademark is your brand identifier such as a name, slogan or logo. While choosing the right trademark can be overwhelming, the careful time devoted to selecting a protectable mark and registering it can be helpful when avoiding disputes as your business grows. Below are five tips to help you avoid trademark disputes and a potential costly rebrand.
Only Adopt A Trademark After It Is Cleared
Clearing your trademark is step one in avoiding trademark disputes. Before you adopt a new trademark, to the greatest extent you can, you should devote time and resources into making sure that your new mark will not infringe on another party’s trademark rights. While this may sound obvious, we see many trademark disputes occur that could have possibly been avoided if more time and effort was made in initial research about a potential trademark for your brand.
Once you identify a trademark you want to use for your brand, we generally suggest you do some digging around on the internet to see if you can find any marks that are identical or similar to marks in connection with your goods and/or services and any closely related goods and services. Then, if you do not find anything that appears to be problematic, your next step is to reach out to a trademark attorney to (1) conduct a formal, thorough “trademark availability search” through a vendor or (2) file your application for your trademark(s). While a clearance search through a vendor does not guarantee that no issues will pop up with your new trademark, it generally lowers the risk and gives your new trademark the best start at avoiding a dispute.
Register Your Trademark(s)
Trademarks should be registered in almost all cases. They can be registered with the federal government, specifically the United States Patent and Trademark Office, with individual states and internationally. While states allow you to secure a trademark registration, the federal registration of your mark affords more protection because it protects your mark throughout the country instead of just one state.
In order to obtain a federal trademark registration, the trademark owner must be using the mark in “interstate” commerce, which most marks are. A federal trademark registration will give the owner national rights to its mark, including preserving its right to expand into geographic regions throughout the United States not previously expanded into, which state registration will not allow.
A federal registration also serves as a deterrent to others seeking to use a mark similar to yours. The registration shows you are active in protecting your trademark rights, and once registered for five years of continuous use of your mark, your mark can also gain what is known as “incontestable” status which makes your mark even stronger.
Lastly, if a dispute over your trademark arises, your federal registration entitles you to a few things: (1) presumption from the court that your registration is valid, (2) additional damages in the event your mark is found to have been infringed and (3) easier working conditions with the United States Customs Service to prevent the importation of unauthorized goods bearing your register mark into the United States
Actively Manage Existing Trademark Registrations
Once your mark is registered, to maintain exclusive rights to your mark, you are obligated to “police” the mark. This means that you need to take steps to stop others who are using the Mark or a similar Mark in connection with related goods or services. If you are aware of infringers you should contact your attorney. Failing to take action to protect your mark could cause your trademark rights to be weakened or lost.
Below are additional important items when, managing your existing registrations:
- Keep the registration ownership information up to date, including the company name, address and contact email address or important correspondence from the trademark office of someone trying to reach you about your mark may be missed.
- Ensure your registration renewal deadlines are met to show proof of your continued use of the mark.
- Review your registration to determine availability of incontestability status, and the potential to apply for the Principal Registerer for a mark that is currently registered on the Supplemental Register.
- Review the goods and services offered under your registration to determine if a new class of goods or services needs to be added to your mark to expand the protections of your mark.
Set Up A Watch Service
Once your clearance search is complete, trademark is registered and you are actively managing your registration(s), the next prudent step to protecting your brand is setting up a trademark watch service. A trademark watch service generally monitors sources such as the Trademark Official Gazette, and will alert you of newly-filed applications or applications that are in the publication period of the Unites States Patent and Trademark Office that may be confusingly similar or infringe upon your mark. This information can be invaluable to you as a trademark owner since it allows you to take action early through the Trademark Trial and Appeal Board in the form of an opposition.
While watch services costs can range depending on the type of services required, it is far better to pay these fees up-front than to try and stop infringement once it has started. Think of this as preventive care when protecting your registered mark.
Review the Trademark Official Gazette
Lastly, another preventive measure when it comes to protecting your mark is to regularly review the Trademark Official Gazette (TMOG). Every Tuesday, the TMOG provides bibliographic information and a drawing for each mark published, including a list of cancelled and renewed registrations. Reviewing the TMOG allows you to see any marks that may be confusingly similar to your mark, including actions the United States Patent and Trademark Office is taking with regard to those marks.
The 30-day publication period in the TMOG of new marks allows opposers, such as yourself, to file an opposition if you believe that mark will be damaging to your trademark registration. Remaining informed about these filings will arm you with the information you need to ensure your mark remains protected.
At Lilenfeld PC, we work we can work with you to protect your company’s brand and trademark. If you have any questions or would like a consultation, please contact us at (404) 201-2520.