Trademarks are all around us from the time we wake up in the morning and brew coffee to the time we take pain reliever at bedtime. In short, trademarks are source identifiers. They allow us to rely on a word and/or symbol to reassure us that the product we are buying is the one we know and trust in terms of quality. Trademark facilitates a mass production consumer economy.
Trademark rights are based on use. However, trademark gives many substantive and procedural advantages. Many foreign countries allow exclusive rights to be based solely upon registration.
Federal Trademark Registration
Here are some benefits of obtaining a federal registration for your trademark:
1. The registration certificate is the evidence of the authenticity of the registration and the registrant’s rights for the listed goods.
2. A third party, seeing your federal registration during a search, may decide against adopting a mark that would create a likelihood of confusion. Even if they proceed, an examining attorney may refuse registration of the third party’s mark citing your prior registration. Even if the third party succeeds in getting its application allowed, you can file an opposition based on your registration.
3. A trademark registrant can bring its infringement actions in federal court where the court can grant a nationwide injunction.
4. After some years of consecutive use subsequent to the obtaining of the federal registration, the owner can file a declaration and have its registration made incontestable, which provides a number of procedural advantages in trademark litigation, such as foreclosing an infringer from seeking to have your registration canceled on the basis that the mark is allegedly merely descriptive of the listed goods.
5. When you obtain a federal registration you are legally entitled to display the registration symbol to inform the public that the mark is registered.
Licensing, Policing and Enforcing Trademark Rights
The assumption here is that you own valuable trademark rights and that they have been federally registered. Without a federal trademark registration, you will be hamstrung if you try to stop an infringer. The registration is prima facie evidence of your ownership of the exclusive rights to the mark indicated in the registration for the goods listed. It permits you to sue in federal court where the judge can order the infringer to cease and desist from infringing in one injunction.
Policing a Trademark
Policing a trademark refers to the regular activity of determining whether your trademark is being infringed. Trademark infringement occurs where another party sells goods under a trademark that is so similar in sound, appearance, or meaning to a federally registered mark as to create a likelihood of consumer confusion as to the source and origin of the respective goods.
Check the Internet and see if goods are being offered for sale with your trademark that were not produced by you or your licensee. Check with your sales representatives to see if they have noticed any knockoffs. Make sure that you are using the registration symbol next to your trademark if it has been federally registered. This will deter others from using your trademark without your authorization. It will also ensure that you have the right to recover maximum damages should it become necessary to sue for infringement.
Enforcing a Trademark
When it comes to enforcing your rights, make sure your timing is right before you sue an infringer. If your application is pending, wait until the registration is granted before having your attorney send a cease and desist letter. This will lessen the likelihood that you will become involved in an opposition proceeding. If you have your registration in hand and you sue in federal court, the accused infringer will have a major disadvantage in trying to convince a judge or jury that your trademark rights, as evidenced by a beautiful registration certificate with a handsome gold seal, are invalid or limited. In most infringement lawsuits, you will be trying to obtain injunctive relief; that is, a court order forcing the defendant to quit using the mark it is using, or any other mark that creates a likelihood of confusion. It can be difficult to prove monetary damages because you generally have to show that but for the infringer’s sales, you would have gotten the same sales, and that these customers would not have purchased similar goods bearing a different brand.