STACY J GROSSMAN

What Exactly Is A Trademark?


by Stacy J Grossman,

 

A trademark is the legal term for what is commonly known as a brand.  It is a word, phrase, symbol or design (or any combination of these) that identifies and distinguishes the source of the goods of one party from those of others.  Examples of trademarks are FACEBOOK for social media services, MCDONALDS for restaurant services, TOYOTA for cars, BARBIE for dolls, etc.  Businesses adopt and use brands, and are able to prevent third parties from using the same or confusingly similar brands.

Trademarks are assets that can become highly valuable. According to a report published by Interbrand, APPLE is the most valuable brand in the world, worth an estimated $118 billion dollars!  APPLE is followed by GOOGLE, COCA COLA, IBM and MICROSOFT.

By adopting and using a brand, by providing quality goods and services under the brand, and by consistently marketing and promoting the brand, that brand will become imbued with meaning and good will, and will help consumers associate the brand with a particular business.

No matter how big or small your business, it is often a good idea to clear and register your trademark(s), and build brand equity.

Before you adopt a trademark, it is important to “clear” it – to make sure that a third party is not using the same or a confusingly similar mark.  This will prevent you from receiving a cease and desist letter, or from being sued from trademark infringement.  Performing trademark clearance also helps clear the way to file your own application to register the trademark.  In the United States, a trademark application is filed and prosecuted in the United States Patent and Trademark Office.

A trademark application can be based on either (a) a “bona fide intention to use” the mark, which essentially allows you to reserve a mark for up to three years after allowance of the application by the Trademark Office, (b) actual use of the mark in the United States, or (c) ownership of a foreign application or registration.

The benefits of owning a United States trademark registration include the following:

-       A registration serves as public notice of your claim of ownership of the trademark.  Your trademark will be included in the United States Patent and Trademark Office’s online, searchable database.  This will discourage others from using the same or a confusingly similar trademark

-       A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration.

-       The right to use the federal registration symbol ® when the mark is registered and used in connection with the goods or services listed in the registration.  (Before a mark is registered, you can use the ™ symbol for a trademark and the ℠ symbol for a service mark.)  Use of these symbols provides notice of your trademark rights, and puts competitors on notice that you are serious about enforcing those rights.

-       The right to file an infringement lawsuit in federal court, and in certain cases, enhanced damages and attorneys’ fees if you are the prevailing party.

-       The ability to use the U.S. registration as a basis to obtain registration in foreign countries.

-       The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods.

Please feel free to contact me with questions you may have about the clearance, prosecution and enforcement of trademarks in the United States and around the world.