Why should I get a trademark?

We discussed the difference between trademarks and other forms of intellectual property in our last article entitled How Are Trademarks Different Than Other Forms Of Intellectual Property? Now, we would like to discuss the importance of securing a trademark. Many business owners spend considerable time and attention worrying if they can get one in the first place that they often forget about the consequence of the registration process and the benefits that it affords.

WHAT EXACTLY IS TRADEMARK PROTECTION?

Trademarks are a unique kind of intellectual property. They protect the brands and logos of business for their products and services. Trademarks prevent the dilution or blurring of your company’s image and representation by prohibiting others from adopting or otherwise using that same brand or logo. However, in order to receive the benefits of trademark protection, you must go through the applicable state and federal registration processes (which is discussed in more detail here). While those processes can be arduous and costly, they do endow trademark holders with certain privileges.

BUT WHAT DO I SPECIFICALLY GET WITH TRADEMARK PROTECTION?

A special set of rights and consequences flow from a successful trademark registration. Once acquired, these are potentially good against the world.

Here is a review of them:

• You can use the trademark symbol: ®.
• The public has constructive notice of your trademark ownership.
• Lets you bring a trademark infringement lawsuit in federal court for, among other things, damages, costs, and attorney’s fees.
• Allows you to obtain trademark protection in foreign countries.
• Permits you to prevent foreign goods from entering the country that infringe your trademark.

Furthermore, if you can establish that your mark has the requisite distinctiveness, then it may also be placed on the Federal Principal Register (as opposed to the Supplemental Register). In that case, it will also acquire additional privileges such as the following:

• Statutory presumptions related to the mark’s validity, registrant’s ownership, and registrant’s exclusivity of use.
• Listing on the online database of the United States Patent and Trademark Office.
• Priority across the country based on the filing date of the mark.
• Incontestable status of the mark 5 years from the date of its filing.

From the foregoing materials, it becomes evident that as important as determining whether one can in fact register a trademark, it is still equally important to ascertain and identify the benefits and protections that would come with that registration. The quality of the trademark registration will define the nature of everything outlined above so it is important to have a competent IP lawyer working on your behalf. In the next article, we discuss the various laws surrounding trademarks.

© 2016 John V. Robinson, P.C.