Trademarks are used to identify:
- Products;
- The source of products;
- The manufacturers of products; or
- The merchants where the products are sold.
Trademarks may include:
- Words;
- Phrases;
- Logos; or
- Other symbols.
Trademarks are typically used to distinguish one product and the product’s manufacturer from another product or manufacturer. Prior to registering a trademark, it is important for an individual to run a trademark search to determine whether another entity or business is already using the desired name.
An individual does not want to be forced to change their business name after creating advertising items, such as:
- The business name;
- Advertisements;
- Creating brochures; and
- Other specific items.
What is a Trademark Search?
Prior to deciding on a particular trademark or name, an individual should conduct a trademark search to determine whether or not a similar trademark is already in existence. If an individual uses a trademark which is the same as or similar to another individual’s registered trademark, they may be held liable for damages in addition to the registered owner’s attorney fees.
In general, a court will presume that the unregistered trademark owner was aware of the registered trademark, even if they were not aware. Trademark names or brands should be adequately searched prior to filing an application with the United States Patent and Trademark Office (USPTO) to determine whether the trademark is being used by another individual.
If an individual fails to conduct a proper trademark search, it may result in being forced to change the name. Trademark searches may be performed by an individual using one of the following methods:
- Do their own search of trademarks registered by the U.S Patent and Trademark Office on their website;
- Do an Internet based search to determine if the trademark name is being used by someone else;
- Use a fee-based trademark search agency that uses trademark databases for similar trademarks, for example, Thomson’s SAEGIS;
- Do a search of the state’s trademark database in addition to the federally registered trademarks found at USPTO’s website; and
- Work with an attorney to help search for available and unavailable trademarks.
How Do You Register a Trademark?
A trademark, or service mark, should be registered with the USPTO because, after the trademark is registered, the founder of that trademark will be protected against other individuals who want to copy or duplicate the trademark. In addition, the official registration also puts the rest of the country on notice that the specific trademark has been discovered and registered.
In order to register a trademark with the USPTO, the founder of the trademark is required to intend to use that trademark on products or services which are used nationally and affect trade and commerce.
A trademark cannot be registered with the USPTO if any of the following apply:
- The trademark is identical or similar to an already existing trademark or related good or service.;
- The trademark is on the list of prohibited or reserved list; and
- The trademark is too descriptive and does not qualify for protection.
Once the USPTO has approved the trademark, it will be registered for 10 years. 6 years into that 10 year period, the owner is required to file a form which states that the trademark is still in use.
If the owner does not fulfill this requirement, the registration may lapse.
What are the Obstacles to Registering my Trademark?
There are several bars to registering a trademark, including:
- Surnames: The name needs to be associated with the product more and associated with the surname less to be granted registration;
- Geographic marks: Whether the term has primary geographic significance;
- Immoral marks: An offensive trademark will be barred from registration until it gains enough secondary meaning that the offensiveness is eliminated. There is little likelihood of the trademark being registered if it is immoral; and
- Functionality: A device that is solely functional cannot be registered. If an individual seeks to gain protection of a functional device should consult with a patent lawyer.
What is Trademark Infringement or Dilution?
Federal laws offer protections for trademarks if an individual uses it without permission. Trademarks are protected from trade infringement and dilution. Infringement occurs when an individual uses the same or similar trademark for a similar good or service.
Dilution occurs when an individual uses a well-established trademark for a different service but either tarnishes the trademark’s good name through the use or weakens the consumer’s association between the trademark and the services.
What is Meant by Related Products and Services?
With trademark infringement cases, one company may sue another if that company is using its trademark or logo without permission. In addition, infringement may occur if the other company is using a logo which is substantially similar to the protected logo.
In a close case, a court will typically check first to determine if the products or services are related to one another. For example, if both of the companies are using the logo in connection with the sale of shoes, then it is likely that a court will hold that the products are related.
In contrast, if one has to do with the sale of shoes and the other deals with automobile repair, the products are most likely not going to be considered to be related.
How Does This Work?
The way this typically works is that similar logos which are used for related products or services are more likely considered to be trademark infringement. In contrast, similar logos or trademarks which are used for non-related products likely will not be classified as infringement.
This, of course, will depend upon each unique case as well as on the types of products or services involved.
What are the Requirements for Products to be Considered Related?
Criteria that are used when determining whether a product or service is related may include:
- Whether the goods or services will be mistaken for another, or the likelihood of confusion between the trademarks;
- Whether the company in question is seeking to compete with the other companies;
- Whether the products are associated with a common base of consumers;
- The degree to which the trademark or logo is distinctive when compared to other marks;
- The length of time in which the trademark was used by either party; and
- The intent of the opposing business in utilizing the trademark.
The determination of trademark infringement may vary from case to case.
What are the Remedies for Trademark Infringement?
Trademark infringement typically results in a legal remedy, such as a damages award. A company which is found to be using a logo without the permission of the owner will typically be required to pay damages to make up for lost profits or income which was caused by the infringement.
In addition, the company may be required to forfeit their product. The remaining stock of the product will typically be confiscated by authorities.
Should I Hire a Lawyer for a Related Products and Services Lawsuit?
Every case that involves related products or services will be unique. It may be helpful to consult with an intellectual property attorney if you need to file a lawsuit for infringement damages.
Your lawyer can assist you in determining whether products are related as well as whether there may be consumer confusion over the protected material. In addition, your lawyer will be able to provide legal representation throughout the process, including any appeals, if necessary.
