Protecting Your Trademark/Servicemark
Trademarks or servicemarks allow people to identify the source of goods or services, not the products or services themselves. When people see your trademark, they will know where the product came from or who is providing the service. Trademarks can be names, symbols, packaging, the shape of a product, the colors of a product, the sounds, or scents associated with the product, or any combination of these.
You should consider establishing a trademark for your business to promote, protect, and keep your business from being confused with another. Rights to use a trademark come from using the mark in commerce with the product or service. You may use the “TM” or “SM” symbol immediately with your trademark/servicemark to show that you claim ownership of the mark and intend to assert your rights against those who use it. You may only use the ® symbol after federally registering the trademark. While you may not recover statutory damages for infringement of your trademark unless it’s registered, it may deter others from using it and you may have certain common law rights to protect it.
At the national level, the United States Patent and Trademark Office (“PTO”) offers two federal trademark registrations—the Principal Register and the Supplemental Register. Marks may be registered on the Principal Register if they are shown to distinguish the applicant’s goods and services. Marks may be registered on the Supplemental Register if they pass the more moderate test of being “capable of distinguishing applicant’s goods or services.”
Registration on either the Principal or Supplemental Registers:
· allows the owner of the registered mark to use the registration symbol ® to deter infringers and impress customers;
· provides protection under §39(b) of the Lanham Act against state restrictions on use of the mark;
· gives priority rights in registering in foreign countries according to the provisions of international treaties; and
· places the mark on the PTO database and website at http://www.uspto.gov to serve as notice and may prevent others from adopting the same or similar mark.
Registration on the Principal Register provides the following additional advantages:
· provides constructive notice to those who might later adopt the mark;
· is prima facie evidence of the mark’s validity and registration as well as evidence of the registrant’s ownership and exclusive right to use the mark in commerce;
· allows the mark owner the right to ex parte seizure of goods bearing a counterfeit mark (“a spurious mark that is identical with, or substantially indistinguishable from, a registered mark”);
· gives the owner the right to treble damages (a multiple of actual damages) and attorneys’ fees against intentional use of a counterfeit mark, in the absence of extenuating circumstances;
· provides a deterrent effect of severe criminal penalties for the use of counterfeit marks;
· allows the owner to have the Bureau of Customs exclude imports bearing infringing marks; and
· gives the owner the right to apply to have the mark declared “incontestable” (although it can still be challenged, it is the highest form of protection available) after five years on the Principal Register and compliance with certain formalities.
Registration of a mark on the Supplemental Register, while not providing the more expansive protection of a mark registered on the Principal Register, will provide the following benefits to the registrant:
· allows the owner to file an infringement action in federal court;
· gives the PTO the ability to cite the mark against a later application by a third party for a substantially similar mark on the Principal Register;
· provides the owner the opportunity to have the mark registered on the Principal Register. This can be accomplished by showing that the mark has acquired “secondary meaning.”
A showing of secondary meaning may be demonstrated once the mark has been in use for a period of time, usually five years.
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