Brand Names And Trademarks Simplified: Part Two
by Paul Ruden
In part one of this series, I described the general outlines of trademarks as applied to brand names. In this concluding article, I will discuss how full protection can be secured for trademark rights and also how protection can be lost. A good place to start is the website of the U.S. Patent and Trademark Office, which has an abundance of information about protectable marks and important procedures. See Protecting Your Trademark: Enhancing Your Rights Through Federal Registration.
This material is complicated and I believe that, as with most such legal matters, you should consult a knowledge attorney if you value your brand name and intend to defend it as a trademark against possible usurpers. Before talking with an attorney, however, you should educate yourself more deeply by viewing the video and written materials available at no cost on the USPTO website. I will cover a few highlights from these materials here, but they are too extensive and complex to describe in detail.
One important point of potential misunderstanding relates to the use of Internet domain names. Merely registering a domain name, such as “acmetravel.com,” with a domain name registrar, does not, by itself, create trademark rights in the name “Acme Travel.” Using the domain name in other ways, however, may create some protectable trademark rights. Similarly, registering your business name with the states in which you do business does not, by itself, create a protectable trademark interest. Finally, even if you register your mark with the U.S. Patent & Trademark Office, enforcement of your rights is solely your responsibility. The government will not act on your behalf to protect your mark.
The simplest way to acquire and protect a trademark is to obtain a “common law trademark.” Such trademarks are not registered with the federal trademark office. They are acquired by being first to use the mark in commerce, indicating you are declaring rights in the mark with the superscript symbol “TM,” as in “Acme TravelTM.” The use of the TM indicator is a signal to others that trademark rights are claimed. The protection you get, however, is limited to the geographic area in which the use of the mark is continuous. The very important point here is that because the protection depends on first use, you must create a record establishing when you first used the mark and keep records showing the regular use of the mark in commerce. If you can’t prove first use, you may lose your mark to another business using the same mark that does have such evidence.
Generally, the first user can get damages against interlopers and enjoin their further use of the common law-protected mark in the geographic area where the first use occurred and continues, as well as any area into which expansion of the use might reasonably occur. Be aware, however, that if a competitor registers the mark in the federal trademark registry, you must challenge the registration within five years or you could lose the common law protection everywhere.
If your brand name is truly a valuable asset that you are prepared to defend aggressively, you may want to register it with the U.S. Patent & Trademark Office yourself. Doing so successfully gets protection of the mark throughout the United States rather than just in the area in which you are currently using it and its penumbra. USPTO maintains a digitally searchable database of all registrations, so it is relatively easy to find marks and avoid infringement (by you and others).
There are other benefits. For a federally registered mark, you may use the ®symbol to signify your superior trademark claim. Among the benefits of registration is the potential to defend your rights in federal court, including recovery of profits earned from the improper use, statutory damages and recovery of legal fees. You can get triple damages from a willful offender.
These benefits do not come free, however. You have to be diligent and aggressive in addition to being willing to front the legal costs of defending the mark. This requires a serious risk assessment that, among other things, compares the costs of litigation, the likelihood of success and the costs/risks of letting in infringer continue to use your mark. Also, one thing you do not get from registration is superior rights over a prior common law trademark holder in the area where the common law rights operate.
I said at the beginning that this is a complicated area in which you should invest in competent legal counsel to understand in detail what trademark protection can mean, and what it does not mean. Like international relations, you can only keep what you can protect. And, looking at the other shoe, you don’t want to invest a lot of money over time to develop a strong brand name only to find out that someone else has superior trademark rights in the brand name. Diligence is required at the outset when choosing a brand name so you don’t get blindsided later.
