Neglecting Trademark Protection Could Be a Costly Mistake

by Cooley LLP

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:


  • 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


  • 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

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