Trademarks can be core assets of a company. Sometimes trademarks are the only marketable asset. A trademark or service mark does not acquire value by sitting passively on a trademark register. Indeed, it is not the registered trademark which is the company asset or the number of trademark registrations, but the brand. Branding is not achieved easily. A brand is not built overnight. A successful brand is the result of investments often over a long period of time. A strong trademark is the result and the expression of excellent quality of a particular product or service as well as successful marketing, promotion and public relations.
A trademark is a word, symbol, design, number, sound or combination thereof which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Without the ability to distinguish the value and quality of one’s goods or services from another’s goods or services, it would be impossible to obtain a competitive edge in today’s fast paced market.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a different mark. Trademarks or service marks, which are used in interstate or foreign commerce, may be registered with the United States Patent and Trademark Office.
Although registering your mark before a respective state entity or the federal government is highly beneficial to the trademark or service mark owner, one can establish rights in a mark based on legitimate use of the mark without a registration under state or common law – at least in the United States. Simply offering a product or service for sale under a particular mark is enough to establish trademark or service mark rights in the United States. However, owning a federal trademark registration on the Principal Register provides several advantages such as:
- • Constructive notice to the public of the registrant’s claim of ownership of the mark.
- • A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
- • The ability to bring an action in federal court concerning the mark under certain sections of the federal Lanham Act.
- • The use of the U.S registration as a basis to obtain registration in foreign countries.
- • The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Outside the United States, registration is sometimes mandatory to protect or claim trademark rights. Many countries do not follow the common law principles of United States law. Therefore registration of trademarks in these countries is even more important.
Trademark Infringement – The elements for a successful trademark infringement claim have been well established under both federal and state case law. In brief, a plaintiff in a trademark case has the burden of proving that the defendant’s use of a mark has created a likelihood of confusion or mistake as to the origin or source, or that the offending mark creates a false association of the defendant’s goods or services with the plaintiff or the plaintiff’s goods or services. The plaintiff must first, however, demonstrate that it has developed a protectable trademark right in a trademark, i.e., continuous use of the mark in commerce. This can be done, at least initially, by presenting a Certificate of Trademark Registration to the court. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public.
The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was registered, reimbursement for attorneys’ fees could also be available to a successful plaintiff. Monetary damages are also available under the Lanham Act and state law in the form of lost profits by the plaintiff or gained profits by the defendant.
The attorneys at Santucci Priore, P.L. can guide you through the various issues and options for protection, registration, licensing and policing and litigation of trademark rights and branding and defense of such claims.
- • Basic and/or Comprehensive Trademark Searches
- • Applications for Trademark and Service Mark Registration
- • State Registrations
- • Federal Registrations (United States Patent and Trademark Office)
- • Intent-To-Use Applications
- • International Registrations
- • Office Actions and Replies
An Office Action received from the United States Patent and Trademark Office on an application to register a trademark generally acts as a non-final refusal of the application. The applicant’s options, by no means, end there. Generally, a six (6) month period is provided to respond and to amend the application, where appropriate. An applicant even has options after receiving a FINAL refusal of a trademark application. Deadlines are strictly enforced, so contact an attorney, if you believe you need one in a timely manner. The attorneys and staff at Santucci Priore, P.L. have handled thousands of Office Actions from the United States Patent and Trademark Office, and are equipped to appeal any adverse decision through all available avenues and appellate levels.
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