Protect the most valuable property you own – your business identity. It’s how your customers remember your business, and it’s your most sizeable and protectable long term investment. We understand how to protect your corporate identity using preventative steps and trademark enforcement services.
When our clients select a word, design or slogan that identifies their goods or services, we perform searches to ensure there are no previously registered or conflicting materials already existing. By starting out correctly before the launch of your brand, we help you avoid headaches. Doing it the right way not only avoids confusion in the marketplace, but it also may avoid legal action against you. Trademark laws are here to protect you, but they can be difficult to navigate. We can help.
Branding is everywhere, and it is the driving force behind customer loyalty. Our firm handles all aspects of intellectual property protection. We can help secure the right protection, and if or when your brand is infringed, we will hold the infringer accountable.
Step One – Trademark Search and Trademark Selection
Your branding signals to consumers your investment in high quality products, and every dollar you invest in advertising can only be recaptured if your branding is strong and distinctive. In the digital age, many people across the globe use trademarks to compete for your customers. When selecting a strong brand, you have an obligation not to tread on other people’s legal rights. We can perform a pre-filing trademark search to make sure the brand name you select will avoid confusion in the marketplace.
Specific Recommendations for Selecting a Trademark
Choosing a trademark can be a daunting task. Below we lay out a few basic guidelines for choosing a mark to ensure that you have the strongest trademark possible.
- Marks must either be inherently distinctive or acquire distinctiveness to be eligible for protection.
- A mark is inherently distinctive if its intrinsic nature serves to identify a particular source. Inherently distinctive marks automatically tell a customer that they refer to a brand.
- Generally, to acquire distinctiveness, a mark must acquire what is known as having a secondary meaning. A mark acquires secondary meaning when in the minds of the public, the primary significance of the mark is to identify the source of the product itself.
Over time, the courts have developed a system for classifying a mark’s distinctiveness. Courts have created different categories, ranked by degree of distinctiveness:
Arbitrary / Fanciful > Suggestive > Descriptive > Generic
Arbitrary / Fanciful
- Arbitrary marks are those that have meaning but in no way describe the particular product or service they identify. Examples include Apple, Google and Subway.
- Fanciful marks are marks that are made up and have no meaning other than their trademark meaning. Examples include Kodak, Exxon and Xerox.
- Marks that suggest the nature, quality or characteristic of the products or services in relation to which they are used, but do not describe this characteristic, and require imagination on the part of the consumer to identify the characteristic. Examples include Blu-Ray, Microsoft and Coppertone.
- Descriptive marks are just that – descriptive. They merely describe the goods or services to which they pertain. Examples include Best Buy and International Business Machines (IBM).
- To achieve substantial federal protection, descriptive marks must acquire secondary meaning, which typically takes at least five years.
- A generic trademark is a trademark has become the generic name for, or synonymous with, a general class of product, or services.
- Generic terms are not protectable.
- Marks can be generic, e.g., Bar-B-Que, or become generic over time. Some examples of well-known trademarks that became generic over time include linoleum, escalator, trampoline, thermos and yo-yo.
When choosing a trademark for your business, you should always strive to choose trademarks that are either arbitrary, fanciful, or suggestive.
Step Two – Trademark Registration
Filing for a trademark registration gives others fair warning of your rights. An effective trademark strategy includes not only picking a conflict-free trademark but also registering with the government. The registration process generally takes about one year, but during that timeframe a trademark user can typically continue using the brand so long as the trademark search does not return a conflict. A trademark registration is a critical step in protecting your brand.
Federal Trademarks vs. State Trademarks
There are two kinds of trademark registrations – federal and state. Most people know of the nationally recognized trademark registration that is issued by the United States Patent and Trademark Office, known as a federal registration. This is the strongest form of protection for businesses who advertise on the internet, and a federal registration protects your trademark in all 50 states.
There are also state-level trademarks for businesses who only conduct business on a local level. These can be important for service providers who sell only in a limited geographic area with no plans for expansion.
Step Three – Protection
If your branding is being copied by a competitor, or if your customers are getting confused or misled, then you should have an attorney review the facts to determine if your trademark is being infringed. Trademark infringement matters are very important and should be promptly addressed.
If someone is directly copying your product, the law recognizes this as counterfeiting. In these cases, we can assist you in understanding your rights not only on a local level, but we can also help curb imported counterfeited products. These remedies typically require a federal trademark registration, which is another reason it is important to secure a federal trademark registration early.
Beware of Trademark Services Scams
Whether you have already received a federal trademark registration or you are in the process of filing an application for one, the United States Patent and Trademark Office (“USPTO”) makes the following information a matter of public record: the trademark owner’s name; the trademark owner’s address; the trademark sought for protection; and the applicant’s full contact information.
As a result of this information becoming easily-mined public information, we are hearing from our clients how scam artists are taking the opportunity to send very official-looking letters or invoices demanding payment of what appear to be official fees relating to trademark applications and trademark registrations. Many of these mailers make it very easy to send money to what appears to be an automatic renewal process when in fact these are not official notices from the USPTO.
The kinds of scams unsuspecting applicants and owners might receive include extra services for international filings, U.S. Customs & Border Protection fees, services to register domain names that include trademarks, offers to renew your trademarks, or offers to respond to official office actions on pending applications.
We encourage you to be cautious when receiving official-looking materials that concern either your patent or trademark pending applications or formal registrations. For more information, please visit the United States Patent and Trademark Office warning pages on these different kinds of scams: https://www.uspto.gov/patents-getting-started/using-legal-services/scam-prevention.
Amazon Brand Registry
The popularity of e-commerce websites (Amazon, Etsy, E-Bay, etc.) has created problems for trademark owners including trademark infringement and counterfeiting.
The “Amazon Brand Registry” is designed to combat some of the infringement problems, and Amazon encourages all Amazon sellers to enroll. This free program provides global word and image searches to find potential infringers and allows trademark owners the quick ability to review and remove potential infringers from the Amazon Marketplace.
Amazon now requires sellers to have a federal trademark registration for a standard word mark or a combination of a design and wordmark (Design only marks are not currently eligible for the Amazon Brand Registry). The registration must also be on the Principal Register.
Using U.S. Customs to Enforce Your Trademark Rights
An owner of a federally registered trademark or copyright can use U.S. Customs to block the importation of infringing goods. This program is known as the Intellectual Property Rights (IPR) enforcement program of U.S. Customs and Border Protection (CBP).
Register Your Trademark or Copyright
To take advantage of the IPR program, you first need to register your trademark with the United States Patent and Trademark Office or your copyright with the U.S. Copyright Office. This step is mandatory. The CBP will not take action without proof of a valid federal registration.
Record Your Federal Registration with U.S. Customs
After securing a federal trademark registration, the next step is to record your registration with CBP using an e-Recordation system. The fee for each copyright is currently $190, and the fee for a trademark is $190 per International Class of Goods/Services.
After your federal registrations have been recorded with the CBP, the Customs professionals will search for products that appear to infringe any recorded copyright or trademark it has on file. If it finds a counterfeit or infringing product, the CBP will detain the shipment. The CBP will then send the registered IP owner a detailed letter informing the owner of the attempted importation of the infringing goods. This allows the IP owner to pursue legal action against all parties involved in the attempted importation of infringing goods.