Federal trademark registration confers a number of important advantages. In fact, the 1946 Lanham Act that created the registration system never anticipated the benefits modern trademark registrants enjoy. Some examples include trademark control on Amazon’s Brand Registry, preferential status in domain name disputes and the presumptive owner status in dealing with infringing advertising through Google’s trademark infringement system.
What has never changed is the importance of trademark protection. The most valuable asset of a company is often its brand. Unlike other assets that depreciate with time, properly maintained trademarks may increase in value. Smith & Hopen® is an AV-rated intellectual property law firm based in Tampa Bay, Florida with over 20+ years experience in the federal trademark process. We protect billions of dollars in assets and goodwill through the federal trademark system.
The Lanham Act provides indispensable advantages to Tampa Bay brand owners with federal trademark registrations. These advantages include national rights, incontestability, enhanced remedies, presumption of validity, constructive notice, federal court access and importation protection.
Federal registration provides the legal effect of having using the trademark in all 50 states and U.S. territories at the time of filing. This priority claim overrides later common law usage.
Few things in the law can earn the moniker of “incontestable” but most registrations can achieve this which removes many important defenses to infringement claims. This is one of the very few circumstances where statutory law permits quiet title of an intellectual property asset. Accordingly, this may be one of the most important long-term advantages of federal trademark registration.
Trademark registration confers enhanced recovery options. In addition, the registration helps significantly in domain name disputes and administrative handling of brands by Amazon, Google and Facebook.
Registered trademarks are presumed valid and provide evidence of seniority. Accordingly, there is greater leverage in asserting trademark rights as a plaintiff when the burden shifts to the alleged infringing defendant.
Ignorance is not a defense to a federally registered trademark. Once registered, all infringers have “constructive” notice of its existence. In other words, the presence of a registered trademark in the USPTO database often prevents a potentially innocent infringer from unknowingly adopting the registered trademark.
Federal trademarks can be used to stop infringers through the Department of U.S. Customs and the International Trademark Commission (ITC). Bringing an ITC action typically requires legal counsel. However, the enforcement arm of the ITC is the law enforcement branch of U.S. Customs. Therefore, obtaining a “take” order from the ITC can be a dramatic advantage for a company holding a federal trademark registration.
Trademark infringement cases may be brought in either state or federal court when the mark is federally registered. Accordingly, the trademark registration owner (plaintiff) has more flexibility in selecting the best venue for the case.
Policing your trademark is an important task for maintaining the strength of your trademark rights. There are passive and active approaches:
- Waiting until instances of confusion arise between your brand and that of a third party.
- Periodically searching the Internet and industry for potentially infringing brands.
If your trademark has real value, you’ll want to proactively monitor the U.S. Patent & Trademark Office trademark application filings to determine if anyone is seeking rights to a confusingly similar brand. It is difficult for even the most experienced trademark attorneys to do this manually because one must look not just for “identical” trademarks, but those with:
- phonetic similarity;
- orthographic similarity and misspellings;
- prefix, infix and suffix variations;
- vowel and consonant similarity;
- plurals and stemming;
- abbreviations and acronyms; and
- other similarities
Well-informed brand owners and intellectual property practitioners set up sophisticated trademark watch services for an annual fee. Every 1-2 weeks, the monitor queries trademark databases in the U.S., Europe and in other countries for newly filed applications that could infringe the trademark owner’s rights.
For a litigation-grade trademark registration we often start with a knockout search. If the mark is a reasonable candidate for registration, budget approximately $955-$1,600. The process takes about a year and once granted, budget around $100 per year to keep a federal trademark in-force with renewals. No attorney can ethically guarantee a trademark will grant. The examination process at the U.S. Patent & Trademark Office (USPTO) is adversarial and even when approved by the trademark examining attorney, every mark must be published for opposition for one month wherein private parties can oppose the registration of a trademark.
While it is possible to trademark a last name/surname, you cannot secure a federal registration on the principle register for a trademark that is primarily merely a surname. You can secure a trademark registration for a surname that has acquired distinctiveness or a surname that is not primarily merely a surname. In addition, you can register a trademark that is primarily merely a surname on the supplemental register.
A trademark office action is a formal communication from the U.S. Patent and Trademark Office. The office action identifies the legal status of your trademark application. The office action will also identify any issues with your application and designate the period in which you must reply to office action to prevent your application from going abandoned.
You may require assistance from an experienced trademark attorney to overcome the issues identified in the office action. In the last 20 years, Smith & Hopen has helped trademark owners overcome every possible reason for refusal. Contact us today for a free consultation.
The difference between a service mark and a trademark is a matter of semantics. A service mark is a trademark. However, the term “service mark” is used to refer to trademarks for services. The term “trademark” is often used in a broader sense to describe marks used in connection with goods and/or services.
Regardless of whether you are offering goods or services in connection with your trademark, the experienced attorneys of Smith & Hopen can advise you on all things trademark. Contact us for additional information or a free consultation.
A trademark is any distinctive words, designs, logos, and slogans used to identify the origin of a good or service. In some cases, even a particular color, sound, and scent can be trademarked if a certain degree of consumer recognition has been achieved. A trademark is sometimes referred to as a “brand name.”
A trademark can be registered with the U.S. Patent and Trademark Office to secure nationwide trademark rights. These nationwide trademark rights prevent others from offering for sale similar goods or services under a similar trademark. Trademark rights, however, will not prevent others from offering for sale similar good or services under a clearly dissimilar trademark. You should consult an experienced trademark attorney to determine if your trademark is available for registration with the U.S. Patent and Trademark Office.
You can trademark your first name. The main purpose of a trademark is to identify a source of goods and/or services. Should you choose, you can use your first name to identify the source of your goods or services.
However, your trademark application could still be denied if it is confusingly similar to a preexisting trademark application or registration. You should consult with a trademark attorney to determine whether your name is available for trademark registration.
Yes, you can trademark a color, but it is challenging and you must prove it has acquired secondary meaning. It cannot be “functional” with respect to the product (e.g., bright orange traffic cones). Some examples include brown for UPS trucks, pink fiberglass for Owens Corning insulation and orange scissor handles.