The identity of a brand many include many different aspects, including:
- Logos;
- Slogans;
- Mascots;
- Color schemes; and
Other distinguishing features.
The success of a business may depend upon the strength of the brand’s identity. When an individual is selecting their brand name, they should ensure that it is creative and unique.
If a brand is distinctive, it will be easier to promote to customers and will also be easier to protect under the law. Once a brand is established, an individual should use it as often as possible.
The more a business promotes its name, logo, and slogan, the stronger the brand will be to customers.
How Can I Protect My Brand under the Law?
There are a number of important legal protections that exist to help businesses protect their brand from their competitors. In order to ensure that a competitor does not misuse a brand, the owner should register their brand with the United States Patent and Trademark Office (USPTO).
A trademark serves to identify the company’s products as well as to promote those products to consumers. A trademark may be owned by any type of legal entity, including individuals and businesses.
If a company offers a service instead of a product, they may obtain a service mark. A service mark is similar to a trademark but is used for services instead of goods.
What is a Trademark?
Trademarks are used to identify:
- A product;
- The source of a product; and
- The manufacturer or merchant of the product.
Trademarks may come in the form of:
- Words;
- Phrases;
- Logos; or
- Other symbols.
Typically, a trademark is used to distinguish one product and that product’s manufacturer from another product. Before an individual registers their trademark, it is important that they run a trademark search to determine whether their idea is already in use.
It would be difficult, even detrimental, for an individual to create a business name, advertising items, and brochures and later be forced to change the name of their business and re-do all of those items already made.
What is a Trademark Search?
Before an individual decides to use a particular trademark or name, they should conduct a trademark search in order to determine whether a similar trademark is already in use. If an individual or businesses uses a trademark that is similar to, or the same as, another registered trademark, they may be held liable for damages and the registered owner’s attorney fees.
In general, courts presume that unregistered trademark owners were aware of the registered trademarks, even if they were not. Trademark names or brands should be searched adequately prior to filing an application with the USPTO in order to determine whether a trademark is already being used by another individual or entity.
Failing to conduct a proper trademark search may result in the business being forced to change its name. Trademark searches may be performed by several different methods, including:
- Doing a search of trademarks registered by the U.S Patent and Trademark Office on the USPTO website;
- Doing an Internet-based search to find out if that trademark name is already being used by someone else;
- Using a fee-based trademark search agency that searches trademark databases for similar trademarks, for example, Thomson’s SAEGIS;
- Doing a search of the trademark database of the state as well as the federally registered trademarks found on the USPTO’s website; and
- Working with an attorney who can help search for trademarks that are available and provide advice about those that are unavailable.
What are Trademark Protection and Associated Rights?
There are several types of trademark protections, including:
- Common law marks: These are marks that arise from actual use and are not federally registered or registered under any state law. The user of a common law mark acquires restricted rights over the trademark use. The scope of these rights only covers geographic locations where the trademark is actually used and expected to be used;
- Trademarks under state law: If a trademark is used in interstate commerce, it may be registered in many different states. If it is not used in interstate commerce, it can only be registered under the law of the state where it is actually being used; and
- Federally registered trademarks: These are trademarks that are protected by the federal law called the Lanham Act. Such trademarks result from constructive use. In other words, the federal trademark application may be filed before the actual use of the trademark, provided that the filing is based on the bona fide intent to use the trademark in the future.
What Protections Result from a Federal Trademark?
There are numerous advantages of registering a trademark federally, including:
- The United States Patent and Trademark Office (USPTO) database places the trademark on their list;
- The public receives notification of the owner’s rights in the trademark;
- Federal registration creates legal presumption of ownership;
- The trademark or service mark’s owner can take action in federal courts to stop trademark or service mark infringement;
- National registration in the U.S. allows for international registration; and
- Recording registration with the U.S. Customs and Border Protection Services preempts trademark infringement by foreign importers.
What is Trademark Infringement?
Trademark infringement occurs when there is an unauthorized use or reproduction of a trademark, for example, a logo or brand symbol. Trademark infringement is similar to service mark infringement.
One common way trademark infringement occurs is when a clothing manufacturer attaches a brand label to a general item in an attempt to pass them off as authentic. Trademark infringement violations can be very serious.
In many cases, trademark infringement involves aspects of deceptive trade practices. Trademark infringement may result in legal consequences, including:
- Monetary reimbursement for losses to the plaintiff;
- An injunction requiring the defendant to stop producing, using, or distributing the goods with the trademark; or
- The seizure of the goods that used or incorporated the unauthorized trademark.
What is Trademark Dilution?
As noted above, trademark dilution is similar to trademark infringement. With trademark dilution, a trademark is used in a way that lessens, or dilutes, the uniqueness of an original trademark.
For example, the brand name of Advil is commonly associated with pain relief medication. If a company attempted to market a product called Advil Cooking Oil, they can be sued for trademark dilution.
This is because the phrase Advil Cooking Oil uses the word Advil in such a way that it severely detracts from the product that the public normally associated with Advil. It may be difficult to prove trademark dilution is occurring.
Typically, trademark dilution involves a trademark that is very famous or that is popularly used in the public consumer market.
Do I Need an Attorney?
If you have any issues, questions, or concerns related to a trademark, it may be helpful to consult with a trademark lawyer. Your lawyer can assist you with registering a trademark that is not currently in use and perform searches to ensure that your trademark is not being infringed upon or diluted.
It is better to consult with a lawyer prior to attempting to register your trademark to ensure that you do not have to re-do all of your hard work. Your lawyer can also ensure that your business is in compliance with all applicable laws in your state.
