04 Jan Overview of Trademarks
You Created a Trademark. Now What?
You’ve done the hard work of creating a trademark to represent your brand and have, therefore, created a tremendously valuable asset. Now you need to figure out what you need to do to protect it. In the United States, trademark owners have three clear choices: (1) register the trademark federally with the United States Patent & Trademark Office; (2) register the trademark with the state in which the business exists; or (3) do nothing.
Federal Registration with the USPTO
Federal trademark protections in the United States are granted and enforced by the Lanham Act, which took effect in 1947. The Lanham Act offers remedies against trademark infringement (an unauthorized party uses a trademark that is identical or confusingly similar to a trademark owned by another party), trademark dilution (an unauthorized party uses a trademark that is identical or confusingly similar to a trademark in a different market), and false advertising (a trademark or brand is harmed by false statements made by another party’s advertising or promotion).
Additionally, USPTO registration provides nationwide protection for trademarks as of the date of registration. And if you discover that another entity has done anything to damage your trademark, you can sue in federal court, obtain treble damages and attorney fees (depending on the case).
Federal registration can be a relatively straightforward process and the benefits are considerable.
State registration of a trademark provides trademark rights only within the territory of the state. This protection is most logical for businesses that only engage in commerce within the borders of their states. However, in the age of the Internet, any company with a website is presumed to be engaged in interstate commerce.
Acquiring a state trademark tends to be a quicker, less costly process than federal registration. It’s also more sensible for businesses who provide a service in a confined area.
Do Nothing (Common Law Trademark Rights)
Trademarks that are continuously and consistently used have inherent value. They provide new and existing customers with information about that nature of your business as well as the quality of your goods or services.
However, while the United States recognizes common law trademark rights, which arise from actual use of a trademark, such trademarks do not receive the extensive range of benefits that are enjoyed by registered trademarks. To protect your common law trademark, owners may bring a lawsuit against bad actors for misrepresentation or passing off their trademark as the owner’s trademark, but only in a geographical area that is limited to where the trademark owner has continuously used the trademark.
Not registering a trademark with either the state or the federal government could prove to be a costly and time-consuming decision and could even result in the owner of the trademark losing some or all of his rights.
Constance Rogers is an attorney and the founder of Rogers Legal Group. She represents clients in intellectual property, business, estate planning and probate, civil and criminal matters throughout the Coachella Valley.