Vol. 1 LEGAL NEWS YOU CAN USE No. 15
Five Ways To Hit and Protect The Mark
5. STRATEGIC PLANNING
Creating a new business also means staking out territory in the world of symbols, designs and names for the purposes of identifying the source of your product or service. This is particularly challenging in the age of global internet marketing — even if your business is simply focused on local consumers.
After spending so much time, effort and money in creating and building your mark, brand or logo, the last thing you want to receive is a cease and desist letter stating you are infringing on their trademark. Alternatively, another business uses a confusingly similar mark with an inferior product or service, which dilutes the value of your mark by false association.
For these and other reasons, it’s best to research whether there are identical or similar marks being used in commerce for the industry in which your product or services is based. Your mark should be fanciful, arbitrary, or suggestive in nature, rather than descriptive or generic to increase your likelihood of success. Then check to see if the associated domain is available to further stake out your intellectual property turf.
Once you have reached this point, there are three ways in which to seek ownership of your mark, which may be your brand, logo, etc.
4. COMMON LAW
A trademark gains common law protection as soon as it’s used in commerce. The advantage is it doesn’t cost anything, but the disadvantage is that it may be infringing on a state or federal registered mark that is confusingly similar. If it’s not infringing, it may be limited in geographically – that is, just be protectable within the city or area you are doing business — allowing another party to use the same or similar name outside that area. This may limit the expansion of your business. Additionally, damages may be limited to actual loss or dilution of value of your brand but unlikely any statutory damages or guaranty of collecting attorney fees.
3. STATE REGISTRATION
A business owner may register their mark with the state, which may provide stature damages and attorney fees as this gives notice to others that you own the mark. It also seems easier to push through a descriptive mark at the state level compared to the U.S. Patent, Trademark Office, which scrutinizes every detail and with the proposed mark being published in the Gazette for all to see and file a motion to prevent the registration. It’s also a less expensive filing fee. At minimum, state registration is better than common law, but it still may face infringement concerns with a previously filed federal trademark registration.
2. FEDERAL REGISTRATION
There is no better way to protect your mark than through federal registration. This provides for strong protection of your mark through substantial statutory damages and attorney fees against any infringer. Moreover, through the Madrid Protocol and the World Intellectual Property Organization, the mark can be more easily registered in other member countries. The filing fee is roughly $300; however, it may be prudent to have a robust data base search of all similar marks that can be argued to be confusingly similar. This includes marks protected under common law, state law as well as existing international marks. These searches cost upwards of $1000 but they may save a lot of time, energy and much more money in the long run. Moreover, you get to use the circle R next to your mark, which tells the world your mark is federally registered.
For the mark to identify the source of the product and service and, conversely, full common law, state or federal protection, it must be used in commerce. To satisfy the “use in commerce” requirement of the Lanham Act (federal law and registration), a party must demonstrate that the mark was affixed to goods, and those marked goods “[were] sold or transported in commerce.” 15 U.S.C. 1127(1)(B). A party can claim priority when the prior use is an “analogous use,” i.e., when there is “evidence showing, first, adoption, and, second, use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.” New England Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951). The party must demonstrate that its use “was sufficiently clear, widespread, and repetitive to create the required association in the minds of potential purchasers between the mark as the indicator of a particular source and the service to become available later.” T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1376 (Fed. Cir. 1996).