One of my clients was just granted her first federal trademark. As I prepared a letter to congratulate her and give her the registration number, I did a quick search to confirm that the information in the USPTO registration was correct (it isn’t always). Coincidence of coincidences, I found that on the same day her trademark was granted, someone else attempted to register their own trademark… for the exact same word.
So, I let my client know that she had been granted her trademark, and needed to continue protecting it. I also let her know that there was another mark pending which MIGHT be concerning.
My client asked one question in response to both statements: Now what?
A QUICK SUMMARY OF TRADEMARKS
A trademark protects goods or services. It is a “source identifier.” It protects your brand.
It is not a thing that you make/sell/do, but the brand behind it. You want to make sure that when customers see your brand, they know that it means quality. It’s your reputation, and you don’t want your competitors free-riding on your good name and hard work.
Many businesses will put a ™ after their brand name/slogan/logo to let competitors know that this is their trademark. That doesn’t mean that the trademark is registered; it’s like saying “As far as I’m concerned, this is my trademark, so don’t copy it!”
If someone does infringe on your trademark, even if it isn’t registered, you may still be able to stop them. However, without a registered trademark, it can be a lot harder (and more expensive) to do so. First, you’re going to have to prove that what you think is your trademark actually qualifies as one. Then, you’ll have to prove what it is that it truly protects. THEN you can try to prove that someone is infringing, including proving that people are actually being misled or confused by your competitor’s use of the trademark, which sometimes means that you and your competitor have to actually be geographically close to each other.
On the other hand, if you successfully register your federal trademark, then most of that work is already done. You’re mainly left with showing that the other party is infringing, and that people might be confused… even if they’re on the opposite end of the country. Plus, there are federal statutes which can sometimes impose much harsher penalties for infringing.
If you CAN register your mark federally, it usually makes sense to do so. If you can’t… you might want to come up with a stronger brand that you’ll be able to protect better.
USE IT THE RIGHT WAY
So, your trademark was granted. What do you do now?
First, you’re probably going to want to replace all those ™ symbols with ® symbols. This lets people know that what they are seeing is a federally registered trademark. Now, if they infringe, there can be those harsher penalties that I mentioned, and they’ve been warned.
Next, review everywhere you use your trademark. It might be on your website. It might be on your promotional materials and advertisements. It might be on your paperwork. It might be on the packaging for the product itself. Make sure that you are using your trademark as a BRAND, and not as a TYPE OF THING.
If your trademark becomes just a type of thing, then it is a thing that could be made by anyone, and not specifically your brand.
It’s not a box of Kleenexes. It’s a box of KLEENEX® brand facial tissues.