By: H.W. Pfabe | September 20, 2017

 

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.

 

 

 POLICE AND PROTECT

 

Let’s get back to the second part of the conversation with my client. You need to police and protect your trademark.

 

If someone else is using your trademark, or one that is similar enough to confuse potential customers, then you need to stop them. This could mean sending a Cease & Desist letter, or it could mean taking them to court. Why? Because, much like using your trademark as a thing and not a brand, other people using an identical or similar mark to your own can mean that people will stop associating your trademark with your brand, and then you can actually lose your trademark. This is why big companies often have to send Cease & Desist letters to small businesses, or even charities, that are infringing their trademarks. It’s not the big company being heartless. It’s the big company doing what it needs to do to protect its brand.

 

(This is also why some of these companies will then license their trademark to the charity for $1; if it’s officially licensed and used in a quality manner, then they are still legally in control of their brand)

 

What many people don’t realize is that it’s also a good idea to monitor what trademarks your competitors file for. A competitor may file for the same word or phrase, or one similar to it. They might file for the same type of goods or services that you offer. On the other hand, they might not be a direct competitor, but may be filing for a good or service that is CLOSE ENOUGH to your own where customers might be confused.

 

Maybe you make sports equipment, and someone else files to use the same name for t-shirts. It’s not the same category, but it’s still pretty likely that consumers will assume that those shirts are made by the same company as makes the sporting goods. It’s a common extension of a brand, with a lot of customer crossover.

 

The trademark examiner might not think that there would be any confusion and might let it through. Remember, though: You know your business best, and you know your customers best.

 

The USPTO publishes a listing of pending trademark applications weekly. These are “published for opposition.” This is your chance to stop that trademark in its tracks, and potentially avoid the costs of going to court altogether.

 

Many law firms, including my own, offer trademark monitoring services. This means that you can rest assured that someone is looking out for your trademark and will let you know if something might be a problem, hopefully before it becomes an expensive one. If done within 30 days of publication, opposition proceedings can be initiated (or an extension of time can be requested). This can be A LOT cheaper than having to take someone to court down the road, and it can be a MUCH easier battle than trying prove that a competing trademark should be revoked after it has already been granted.

 

You work hard for your business. Now protect it.

 

 

 

As always, thank you for reading, and let me know your thoughts in the comments.

 

 

 

Category: Trademarks 

Tags: Trademarks Opposition