Intellectual Property FAQ
- How do we “get” a trademark?
A trademark is any word, phrase, logo or design (among other things) that identifies the source of certain goods or services to the consumers of those offerings. A company name, a slogan, a logo, even a distinctive color or smell may all function as trademarks. Trademark rights come from the use of those designations in commerce—in the United States, at least—provided that the designation is (a) sufficiently distinctive and (b) not already in use by someone else.
So, the way to own a trademark is to select a distinctive and unique designation for your commercial endeavor, and then to use that designation with your good or services. Once you have trademark rights, they will last for as long as you continue to use the trademark and protect it against unauthorized or generic use. You might also want to file an application to register your trademark with the USPTO and/or other countries for additional protection, but that is strictly optional in the United States (see the next question for more on that subject).
- Should we register our trademark?
The short answer is that “it depends.” Trademark registration is an optional step for brand owners in the United States that should only be attempted after getting a legal opinion. A federally registered trademark can be used with the ® symbol, whereas an unregistered trademark can only use the TM designation.
On the one hand, registration conveys numerous benefits including:
• The legal presumption of exclusive ownership across all 50 states;
• Protection against others registering the same mark for similar goods or services;
• Access to certain legal remedies and damages in case of a dispute;
• Priority over others who make it to the market first, if your application is filed first on an “intent to use” basis; and
• Support against knock-off’s and counterfeits on certain platforms, such as the Amazon Brand Registry Program.
On the other hand, the registration process can raise complications with no guarantees of success. While the process can be fairly inexpensive, it involves a subjective examination by the USPTO that can require significant legal advocacy. And even if an application is approved by the USPTO, the general public will also have an opportunity to oppose the application. Thus, an application may trigger a legal dispute—possibly even the loss of trademark rights—that might have been avoided otherwise.
It’s also important to note that trademark rights outside of the United States can depend on registration. In countries such as China, for example, the first party to file for registration typically has priority to a trademark even if another party was the first to use that trademark in China. And unlike the United States, use of a trademark is not required to register a trademark in China.
Bottom line, registration is always worth considering, particularly if you need to secure trademark rights outside of the United States. But registration may not always be the right move. Be sure to talk to a trademark attorney before going down that road (see the next question for more on that subject).
- We’re thinking about choosing a new trademark … is there anything we should do before we re-brand to protect ourselves?
Yes, absolutely. Before you begin using a new trademark, or in some cases expanding the use of an existing trademark to a new product or channel of trade, a clearance search can identify legal risks and help you to avoid legal disputes before they occur. The process involves searching for identical or similar trademarks that have been filed for registration at the federal or state level, or that are already in use by another company. Our trademark attorneys offer this service, which can be calibrated to fit different budgets and needs. While every clearance search will have certain limitations, taking this step before launching a new trademark can save your company from a costly and time-consuming dispute—as well as better positioning your company to select a strong, enforceable trademark (see the next question for more on that subject).
- Someone else is using our trademark. What can we do about it?
Here again, the answer is that “it depends.” Trademark infringement occurs when someone uses the trademark (or something similar) of the brand owner without authorization in a manner that creates a “likelihood of confusion.” Since this is a subjective standard based on the perception of the relevant consumers, not every use of your trademark may be an infringement.
So, for example, two different companies might use the same trademark for completely unrelated products without infringing each other’s rights. (They may even both register the same trademark provided the goods and services don’t overlap in any respect.) There may also be First Amendment defenses that allow someone to use your trademark without your permission—for commentary or artist purposes, for example, or simply to identify your company.
It is very important to prevent trademark infringement as much as possible. Failure to do so can result in the loss of your trademark rights. That said, a trademark infringement claim can also backfire on the complaining party. It is therefore highly recommended to seek legal guidance before taking any action. In some cases, a demand letter to the other party may be the answer. But in other cases, there may be less costly and more effective options available (see the next question for more on that subject).
- We found a domain name / social media account using our trademark. What can we do about it?
As noted above, not every use of your trademark will be considered trademark infringement. While it’s possible that the use of your trademark in a domain name or social media account may infringe your rights (depending on how the domain name or social media account is used), it will depend on the circumstances. On top of that, your options to stop the misuse of your trademark will also depend on the circumstances.
For example, one option in the case of a domain name that is confusingly similar to your trademark is to file a Uniform Domain Name Dispute Resolution (UDRP) complaint. The other side will have a chance to respond and then the matter is decided by an arbitration panel. The panel will assess not only if the domain name is confusingly similar but also if the domain name was registered by the other party “in bad faith.” The UDRP process can be a quick and relatively inexpensive alternative to a lawsuit. But your success will depend on demonstrating that the other party has no legitimate purpose for the domain name (not simply that it may create confusion with your brand).
It is important to prevent trademark infringement wherever possible. But direct enforcement actions like a UDRP complaint or a takedown complaint to a social media platform are only one means of protecting your rights (see the next question for more on that subject).
- What else should we be doing to protect our trademark rights?
There are many steps you can take right now to protect your trademark rights, such as:
• Using your trademarks in a consistent manner, preferably in a way that sets your trademark apart from surrounding content—for example, in ALL CAPS, in a separate font or color, etc.
• Adding the TM designation (or ® for registered marks) after your trademarks wherever they appear;
• Avoiding any use of your trademark in a descriptive or generic manner; and
• Document any licenses or permissions your company has given others to use your trademark in writing and be sure to include “quality control” provisions.
Talk to a trademark attorney if you have questions abut any of these steps. And also keep in mind that trademark rights may be only one type of protection available to your brand (see the next question for more on that subject).