03.26.15 by Jonathan Feil

Protecting Trademarks

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PROTECTING TRADEMARKS

By:  Jonathan I Feil

1.  Select a strong trademark.

Trademarks that are fanciful (Xerox) or arbitrary (Apple), and not descriptive (Report Writer) are more easily protected. If for business reasons you prefer to have some descriptive meaning (to convey an idea of your product's attributes to customers), you can strengthen otherwise descriptive marks by combining two or more descriptive or suggestive components into one mark.  Avoid terms that are "diluted" by wide use in the particular field.  Combine weak components with more distinctive components.  Choose "suggestive" marks over descriptive ones.

2.  Search to see if your trademark is available before you adopt it.

After selecting a trademark, conduct a search to determine if it is available. The mark should be adopted and registered soon after the search is completed, since the search report is effective only as of a given date.

3.  Use proper trademark notice.

For trademarks registered with the U.S. Patent and Trademark Office, place the "(R)" symbol in the upper right hand corner of the mark. (An alternative notice that the mark is federally registered is "Registered in the U.S. Patent and Trademark Office" or the abbreviated version "Reg. U.S. Pat. & Tm. Off.") Trademarks do not need to be registered in order to have legal protection against infringement. Place a "TM" symbol in the upper right hand corner of the mark. Do not use the registered trademark designation unless and until federal registration is actually issued. Do not use the registered trademark designation in foreign countries unless the trademark is registered there. It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in advertising. ("Widgets is a registered trademark of Widget Corp.") In typewritten letters and memos, identify your trademarks by use of capital letters, bold face type, or quotation marks.

4.  Use your trademarks consistently and properly.

The most effective trademark use is consistent and continuous. A mark can fall into the public domain if used carelessly, and registration can become more difficult if the company's use of the mark has been incorrect. Use your trademarks as adjectives, not as nouns. Refer to your "[Trademark] product," rather than using that term standing alone as the name for the product. Use your trademarks consistently, exactly as designed. Do not use the trademark in plural form. Do not change the mark through additions, prefixes, or suffixes. Monitor licensees and franchisees. Do not license others to use your marks except for the goods and services with which they are associated.

5.  Register your trademarks

Trademarks can be registered nationally, by state, and in foreign countries. Trademarks do not need to be registered in order to have legal protection against infringement. However, registering a trademark confers numerous benefits on the trademark owner -- both in protecting your entitlement to use the mark if challenged and preventing infringement by others using the same or a confusingly similar mark. A national trademark registration with the United States Patent and Trademark Office provides protection thoughout the USA. A state trademark registration may be useful for a trademark used locally or intrastate only. International registrations should be considered in the countries in which the trademark will be used.

6.  Protect your Internet presence.

Internet domain names are now a leading way of promoting trademarks and business names. The .com top-level domain is commonly considered the most valuable. Domain names are generally granted on a first-come, first-served basis. When selecting a word trademark, include domain names in the search and register the .com top-level domain immediately, if it is available. Consider registering in other top-level domains. Do not assume that your domain registration will protect your trademark. Registering a domain name does not automatically confer any trademark rights or protections. Pursue a trademark registration for the domain name promptly.

7.  Manage your trademarks effectively.

Appoint a company trademarks coordinator to administer all aspects of your trademark program: (1) training employees in proper use of your trademarks, (2) reviewing and clearing advertising and promotional copy, (3) deciding whether to register the trademarks, and (4) deciding what action to take against infringers of your trademarks. Make sure all employees and any outside advertising or public relations firms know what trademarks you are using and how to use them correctly. Your employees should also watch for misuse and infringement of your trademarks by other companies. Establish and maintain good records relating to your trademarks.

This is a general guide.

This general guide is not intended as legal advice or a substitute for the advice of an attorney on specific situations. It is for general information only and is not considered an attorney-client relationship for any purpose.  Please contact Jonathan Feil (jfeil@sksp.com) for further information.