As a business owner, you know the importance of protecting your brand and while you may be familiar with the Trademark symbols, you may not know much about trademark law. Trademark law can be complex, but there are some basics that every business owner should know. This blog post will teach you the basics of trademark law and some ways you can protect your brand. We’ll also discuss when you need a trademark lawyer and what type of lawyer you need.

First, let’s start with the basics. A trademark is a word, phrase, symbol, or design that identifies and distinguishes the source of the goods of one company from those of another. Accordingly, distinct brands are stronger and descriptive brands are very weak.  Trademarks can be registered with the USPTO (United States Patent and Trademark Office). Once a trademark is registered, the registration becomes proof that the owner is allowed to use it and can be used to prevent others from using it without permission.

Simply using a brand in the marketplace gives the owner common law rights in the brand. Common law rights are fairly narrow, so many people opt to gain enhanced rights by registering their brand with the USPTO.  Specifically, your common law rights may allow you to prevent someone from using a nearly identical brand in connection with nearly identical goods or services in the exact location as you.  Registration rights expand how far your rights go, and can be used to reserve your rights throughout the country.  Richard Rimer, Brand Counsel for Initiating Protection Law Group suggests that “this geographic expansion is one reason that registrations are more valuable for small businesses than they are for large companies.”

 

Now that you know the basics of what a trademark symbol means according to trademark law, let’s discuss when you need a trademark lawyer.  Two of the skills that trademark lawyers possess are searching and prosecution.  In other words, making sure your brand will not infringe the rights of others and then securing whatever level of protection you are able to obtain.  While any brand can go through this process, it is important to secure the rights of the brands you are committed to.  “Ask yourself if you would be upset if you were told you had to stop using a certain brand,” advises Richard Rimer, “and secure your rights in that brand if the answer is ‘Yes’.”  The registration process can be complex and it is best to have a lawyer help you with it. Recent stats show that only 60% or applications reach registration, but that number is 40% for unrepresented applicants.  Further, having the advice of counsel will ensure your registration functions as it should.  “I’ve seen many companies who get a registration for their brand in connection with ‘shirts’ even though their main offering is restaurant services,” says Richard.  “The uniformed owner simply submitted a picture of a shirt to prove use, and is now stuck with a nearly useless registration.”

 

You can add a trademark symbol to a brand or phrase to let people know that you claim it as a trademark.  Adding a ™ notice or trademark symbol simply tells the world that you think it is a trademark, but that you have not secured a federal registration for the brand.  In other words, you are claiming narrow common law rights.  This type of notice is only useful if you can show that the other party saw it.  On the other hand, placing a ® notice tells the world that you have completed the registration process for that brand.  This is great, unless it is inaccurate.  Placing a ® on an unregistered brand is fraud and could cause you to lose your trademark rights altogether.  By the way, once you get a registration, you must maintain it.  There is a required maintenance filing by the 6th anniversary and renewal filings every 10th anniversary.

There are many different types of trademarks and each serves a different purpose. The four most common types of trademarks are word marks, design marks, color marks, and sound marks. Word marks are the most common type of trademark and are used to protect words or phrases. Design marks are used to protect logos or other designs. Color marks are used to protect a color or a combination of colors. Sound marks are used to protect a sound or combination of sounds. Trademarks are often confused with copyrights but they are different. The symbols are different and so are the protections. For example:

™ : Unregistered trademarks are often claimed with this symbol

℠: A service mark is similar to a trademark in that it’s an unregistered designation, but it implies that the brand is used in connection with a service (as the name suggests) rather than a product or good

® : This symbol is used to identify a registered trademark

© : This stands for copyright or the right to make copies of, license others to make copies of, or otherwise use an artistic or creative work.  It is possible to protect a brand with a trademark and a copyright, but these rights cover different elements.

 

A registered trademark can be used to stop another party from infringing your rights in a brand.  The test for infringement is not exact duplication, but rather “likelihood of confusion.”  That is, when two brands are compared, would an average customer be confused?  There are many factors that can be considered, but the main two are how similar the brands themselves are and how related the goods or services are.  Accordingly, it is important to make sure you are protecting the important elements of your brand. For example, word mark registrations give you the right to use the literal elements (i.e., the words) of your brand in commerce, but these do not protect designs, colors or sounds.

The government does not hire trademark police!  Having a registered trademark does not guarantee that it will be enforced. You must police and enforce your trademark rights or you could lose them. If you see someone using your trademark without permission, you must decide between taking action or losing your rights. You should contact a trademark lawyer to discuss your options.

You may also want to consult a trademark lawyer if someone else is using your trademark without permission. If someone uses your trademark without permission, this is called infringement. There are many ways you can attack enforcement.  Richard Rimer compares this to a game of chess.  “You seldom get results from the very first move.  You need to determine your objectives and then devise a strategy for getting these accomplished.”  These actions typically begin with a demand letter, but not always.  They can settle by an agreement between the partie or by a decision by a court.  “IP litigation is very expensive; it is advisable to try to find a solution that avoids the courts,” says Richard.

 

When choosing a trademark lawyer, make sure to choose one who is experienced in trademark law and who has a good reputation. Experience can often be determined by a review of their profile either on their website, LinkedIn or through a state bar.  It is a red flag if the lead lawyer is a recent law school graduate.  You can ask for referrals from friends or business associates who have used a trademark lawyer before. Finally, don’t dismiss a law firm with few reviews because they may just be a word-of-mouth type business.

Bigger firms are an excellent option if you need representation for a large project and your business size may require a larger support team. But if you have a small or medium-sized business, a smaller firm may be a better fit.  Many attorneys at smaller firms were trained at the large firms, so you get large firm expertise at a small firm price.  Smaller firms may also be able to provide you with a more hands-on experience that you may not get if you are working with a larger firm that will prioritize their premium accounts over yours.

 

Now that you know the basics of trademark law, you can start taking steps to protect your brand. Check out our business directory to view a list of vetted trademark lawyers and if you have any questions about trademark law or if you need help with registering your trademark, be sure to consult a qualified trademark lawyer. You can contact the Initiating Protection team at 678.965.3268 or check out our vendor directory to find a trusted attorney near you. 

 

(Note: By understanding the basics of trademark law, business owners can take the necessary steps to protect their brands. It goes beyond using a trademark symbol.  When in doubt, always consult a qualified trademark lawyer for assistance.This blog post is intended for informational purposes only and does not constitute legal advice. You should consult a qualified trademark lawyer for specific advice regarding your situation.)