TRADEMARK LAW

The name or logo you attach to your business can determine whether your brand is memorable and how consumers perceive it. If another brand uses a similar moniker, the resulting confusion could lead to considerable financial losses. If your trademark is protected by the United States Patent and Trademark Office, it will be easier for you to take action against those who use your trademarked name in a deceptive manner. You may be able to obtain considerable damages covering losses related to the other party's unauthorized use of your trademark. Additionally, federal registration grants you the ability to use the ® symbol, which could dissuade others from infringing on your trademarked name.

The name of your business is not always the same as your trademark. Often businesses have many trademarks to identify various divisions of the business or brands that the business sells. The trademarked names help the consumer identify the source of the goods or services that your business provides. Without a registered trademark, however, you could be vulnerable to infringement because others are not on notice that you claim any rights in the trademark. At minimum, it's prudent to use the TM symbol, which indicates your claim to the rights and goodwill of your chosen trademark. The TM symbol indicates to others that you claim what’s known as “common law” trademark rights which is a more geographically limited, i.e., regional form of protection. This is sufficient if you only wish to have protection in your immediate geographical area, however it is still advised to at least seek state registration in the state in which you operate. In California, you can obtain a state trademark registration at the California Secretary of State’s website. The best and most encompassing registration is of course federal registration at the United States Patent and Trademark Office, which provides protection throughout all of the United States. Registration at the USPTO usually makes the most sense in the 21st Century given that most businesses avail themselves to the public online, which is a worldwide marketplace and thus, they are conducting business in every state of the union. Once a state or federal registration is obtained, the trademark owner can use the ® symbol instead of the TM symbol. Putting others on notice with these symbols may discourage would-be infringers from using your trademark. You'll find it far easier to take legal action against a company that infringes on your state or federally registered trademark — and with a lower burden of proof, it'll be easier to secure damages.

Technically, a trademark can be protected forever, however your initial trademark registration is valid for six years after it is registered with the United States Patent and Trademark Office (USPTO). Stipulations apply however; trademarks cannot be established and then ignored for ten years. To maintain validity, the owner must demonstrate that the trademark is in use in commerce in association with the goods or services listed in the registration — typically by filing a Declaration of Use between the fifth and sixth year of registration. Then, between the ninth and tenth year following the initial registration, and between every ninth and tenth year thereafter, calculated from the date of registration, the trademark owner must file both a Declaration of Use and an Application for Renewal. If these documents are not filed on time, the trademark may expire or be canceled, making reinstatement virtually impossible. However, common law rights may continue even if a federal trademark expires.

If you are willing to use a trademark without federal registration, that trademark applies as soon as you begin offering a good or service for sale in commerce in the United States under a particular name or logo. If, however, you choose to register your trademark with the United States Patent and Trademark Office in hopes of attaching the ® symbol to your trademark, you will need to wait for your trademark application's approval and ultimate certificate of registration to issue. You cannot use the ® symbol while your application is pending. Once accepted, you will enjoy the increased protection that accompanies federal registration. If your application is denied, however, you can continue to use the TM symbol.

Advisable use of trademark symbols depends largely on whether the trademark is registered or unregistered. No rules mandate consistent use of the unregistered trademark (TM) symbol, but experts advise that companies do so anyway. Trademark symbols alert the public to an entity's claim to branding rights for a particular name or symbol. This, in turn, dissuades competitors or other potential infringers from also using the trademarked content. By keeping the public aware of existing trademarks, companies that use the TM symbol can reduce the risk of accidental (or intentional) infringement. With the registered trademark (®) symbol, companies designate official registration with a governing authority. Failure to use either symbol could result in some lost rights when taking legal action against infringers.

While registration with the United States Patent and Trademark Office is not strictly necessary for trademarked names or logos, official registration can be beneficial for many reasons. Chief among these: federal trademark registration grants the registering party the ability to file a lawsuit against any individual or company that infringes on the trademark. If successful, legal action against infringers could result in monetary damages, including coverage of attorney's fees and statutory damages. The burden of proof is far lower for infringement cases involving federally registered trademarks. Federal registration also enables use of the ® symbol, which can be an effective deterrent to infringement. Use of the ® symbol may grant products or services greater sway in marketing efforts.

If your company's name is officially registered with the United States Patent and Trademark Office, you already enjoy considerable protection against infringement. Additional efforts, however, can ensure that your investment in a federally registered trademark pays off. First and foremost, it is important to use the ® symbol to denote federal registration. This symbol alerts potential competitors to your trademark registration and could convince them to avoid use of anything that resembles your trademarked name or logo. If you find that a company has infringed on your trademark, it is imperative that you take legal action; your federal registration enables you to obtain considerable damages to cover the financial losses related to infringement.

Trademarks protect organizations — and the goods and services they provide — from infringement or reputational damage. Specifically, trademarks protect names, words, symbols, or devices (or a combination of these elements) used to distinguish one company's products (goods or services) from another's. While trademarks do not protect actual products, they can ultimately provide additional security by preventing other entities from using a given company or organization's branding. If a trademark is used to protect a specific product's name, the owner need not fear that this carefully selected moniker will be used by another company and therefore lose its impact. Both registered and unregistered trademarks can protect names or symbols, but registered trademarks are typically easier to enforce on a large scale.

The first and most important step you can take for protecting your trademark involves registering it with the United States Patent and Trademark Office. Without federal registration, you'll see a much higher burden of proof, which could make it difficult to win your case. If you register with the USPTO, you will be eligible to use the ® symbol, which may discourage potential infringers from using your name or logo. You'll also find it easier to protect your trademark if you choose a strong, distinctive trademark in the first place; it can be difficult to defend a weak, generic or descriptive moniker or a moniker that resemble those used by other businesses. A trademark attorney could help you select and establish the strongest possible trademark.

Trademark infringement involves a violation of exclusive rights to use a particular name or logo in association with specific goods or services. Infringement occurs when a trademark is used in a way that is deemed deceptive or likely to cause consumer confusion regarding the origin of commercial goods or services. For the use of a trademark to be deemed infringement, the name or logo must be registered with the state or federal government, or possess common law trademark rights established through use of the mark in commerce in association with goods or services. The trademarked moniker must also be currently used in commerce. Infringement can occur even if the allegedly confusingly similar mark is not identical to the original — as long as trademarked material holds enough resemblance to prompt confusion among consumers, use of similar names can be considered infringement.