Neglecting Trademark Protection Could Be a Costly Mistake

by Cooley LLP
Contact

So you’ve formed a new company, launched a new product/service offering, added a new feature to an existing offering, or maybe your company has been doing business and offering products/services for a while now but you still haven’t considered trademarks.  If so, it could prove to be a costly mistake down the road.

What is a Trademark?

“Trademark” is the legal term for the distinctive name that identifies a particular product and/or its source- i.e. brand name (e.g. ROLEX, BLACKBERRY).  Trademarks can also be symbols or tag lines (e.g. the Nike “swoosh” and “Just Do It” are Nike’s trademarks).  Trademarks can also be anything else that functions as a source-identifier (e.g. Tiffany’s teal color, NBC’s three-note chime).

What does a Trademark do?

Trademarks identify the source of your products and symbolize the goodwill and reputation of your company as well as the consumer recognition, trust and loyalty that your brand enjoys.

As a practical matter, trademark rights function both as a sword and a shield:

  • Sword: Trademark rights enable you, the brand owner, to stop others who are using the same or similar names to cause consumer confusion, usurp or freeride on your goodwill and reputation, or harm you by potentially associating your brand with an inferior product.
  • Shield: Trademark rights protect you from others who might try to challenge your right to use or register your brands.

Choosing a Strong Trademark

Not all terms can be trademarks, and not all trademarks are created equal.  The spectrum of trademarks ranges from fanciful marks that can be asserted against similar marks in broadly relevant areas to generic terms in which no single business can claim exclusive rights.

range of trademark strengths

Why Is Trademark Protection Important?

A federal registration gives you a presumption of exclusive rights to use your mark in connection with relevant goods and services.  Without it, you would only have limited rights and protection for your brand, especially if another party beats you to filing for the same or similar trademark.  The benefits of a federal registration include the following:

Sword

  • Presumptive validity and exclusive right to use mark
  • Establish nationwide priority
  • Enhanced ability to deter and stop confusing third party uses (including freeriders and imposters)
  • Better attract investors, buyers, partners, licensees
  • Can seize counterfeits/infringing products with Customs
  • Automatic access to federal courts, possibility of enhanced remedies for infringement

Shield

  • Better protection for brand reputation and goodwill
  • Reduces risk of forced rebranding and/or need to purchase of third party rights
  • Enhance ability to expand geographically and substantively
  • Stronger defense against infringement claims (which can involve hefty damages)
  • Can become “incontestable” after 5 years

What Steps Are Involved In Securing Trademark Registration?

There are three main steps to securing federal trademark registration: clearance, filing, and prosecution.

  • Clearance: Clearance checks to see if you can use or register the proposed trademark in light of other already established trademarks.  Because clearance identifies potential infringement risks, you should conduct clearance on all marks that you plan to use, even if you choose not to apply for federal registration.
  • Filing: If your mark “clears,” your attorney would prepare and file applications based on either current use or future intent to use the proposed mark.  One of the most advantageous things you can do to protect your brand is to file an application as early as possible.
  • Prosecution: Trademark applications mature to registration after an examination by an Examiner at the U.S. Patent & Trademark Office, a “publication” period during which third parties may object to the registration of your mark, and satisfaction of other prosecution formalities.

In short, securing and protecting your trademark from the outset is a relatively inexpensive process that could save you time, money and heartburn down the road.  A federal trademark registration is your best weapon and safeguard for your brand.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Cooley LLP | Attorney Advertising

Written by:

Cooley LLP
Contact
more
less

Cooley LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.