Using Trademarks to Protect Your Company's Brand

As general counsel to many small and medium-sized companies, we help guide many of our clients as to how to use trademarks and servicemarks to their benefit. Surprisingly, many clients overlook protecting their valuable brands. As a courtesy, we provide the following memo to provide guidance regarding using trademarks and servicemarks to protect your brand.

What Are Trademarks and Servicemarks and Why Should You Try to Protect Them?

Trademarks and servicemarks are the names, logos and slogans that your business uses to identify its goods and services. Trademarks identify goods and servicemarks identify services. [1] Ideally when a consumer sees your particular trademark they will identify your company with the good or service associated with the trademark and will associate a certain level of quality with your company.

Since consumers come to identify your company as the provider of a particular type of goods or services simply by spotting your unique name or logo, trademarks can have a great deal of value. For example, the terms “Microsoft®”, “IBM®”, “Coke®” and “Subway®” are all extremely valuable trademarks and signify to consumers who see the mark a certain level of quality and a particular type of product. If another company was allowed to market a product using the same or similar mark it would be devastating to holder of the original mark. A company that looses control over its trademarks risks competitors selling competing goods and services under the same name and consumers would never be able to tell if their company was the original product. Further, if a competitor's product was of inferior quality, consumers may be misled into believing that the original product is inferior or that the original company is somehow connected to that inferior product.

The most valuable marks are unique marks that are not simply descriptive of the goods or services they identify. Naming a particular good or service “Best” or “Quality” simply describes the level of quality, and is therefore very weak. On the other hand, Yahoo® is an example of a unique mark that invites association between a good and particular company. If the mark is too descriptive it will be difficult, if not impossible, to get it registered and will not work to single your company's brand out among competitors.

Since trademarks are an integral part of your business's identity and are a critical way for consumers to locate the good or service they are seeking to buy, it is always in your best interest to try to protect these trademarks as best you can. Without protection, at best your legal rights are limited and at worst, a competitor may begin using the same or similar mark.

Registering Your Trademark Provides the Strongest Protection for Your Brand

There are two main ways to protect your mark domestically [2] : (1) federal registration with the United States Patent and Trademark Office (“USPTO”), and (2) state registration. [3]

  1. The Strongest Protection is Offered by Federal Registration.

    The strongest protection is afforded by federal registration with the USPTO. The main advantages of federal registration include: (1) being able to bring a claim for infringement in Federal Court, which allows you to recover lost profits, damages and costs and treble damages and attorney fees, (2) being able to claim that registration is prima facie evidence of the validity of your registered mark, of the registration of the mark, of your ownership of the mark, and of your exclusive right to use the registered mark, (3) claiming that your mark is “incontestable” which gives you the exclusive right to use of the mark, subject to certain statutory defenses, (4) eliminating an infringers ability to raise as a defense good faith adoption of a mark after the date of registration because registration is deemed constructive notice of a claim of ownership to your mark, and (5) being able to use registration to stop the importation into the United States of goods bearing an infringing mark.

    Because of these advantages having a registered mark substantially strengthens your negotiating power if you find another company using the same or similar mark. Having a federally registered trademark also decreases the chances that someone else will begin using the same or similar trademark since a simple check of the USPTO's database will often reveal the existence of the registered mark and they may decide to use a different name from the beginning.

    You can request federal registration whether you have begun using the mark or not. If you have begun using the mark, your application will describe the goods or services which the mark identifies and will include proof of how you are actually using the mark. For example, if you are selling software under a particular name, you will give them an actual CD, a picture of a CD or a screen shot showing how to download the software which shows the mark. It usually takes the USPTO about 12-14 months to approve the mark once you have filed an application.

    Even if you have not yet begun using the mark you can file an “Intent to Use” application with the USPTO which states that you will begin using the mark in the future involving a particular good or service. Once the USPTO approves the application, you have six months to provide them with proof (subject to certain limited extensions). Since it usually takes the USPTO about 1 year to approve the application, you usually will have about 18 months from the time apply to provide proof that you have begun using the mark.

  2. A Good Backup is State Registration.

    If you do not wish to go through the expense of registering your trademark with the USPTO, or your use of the mark will be restricted to a particular state, it will be cheaper and quicker to register your trademark with the state in which you are seeking protection. However, since most clients use their trademarks on the Internet and either currently or likely will market their goods across state lines, it is generally the better strategy to seek protection at the federal level unless that proves unobtainable. Additionally, state registration lacks the protection afforded to federally registered marks and as a result is not recommended if federal registration is available.

  3. Watching Out for Infringing Users Will Help Protect Your Company.

    Regardless of how you decide to protect your mark, you must watch for infringing uses of your mark by other companies. This can be done by regularly reviewing the yellow pages, searching the Internet and keeping an eye out for other companies using a similar mark. If you discover that there is in fact someone using your trademark or trying to use your trademark in a manner which may be confusing or is likely to cause confusion with consumers, you should take actions to protect your rights. This usually starts with a letter (either from you or your attorney) requesting that the business stop using the mark. If they refuse, you can look into litigation, which may include an injunction against the infringing company and damages. If you have a registered mark, you are required to take actions to protect your mark or risk a determination that you have abandoned your trademark and do not have any rights to enforce against others.

When and How to Use the Symbols “ ® tm sm ”

There are three common symbols used with trademarks: ® tm sm

If you have a federally registered trademark, you should use the ® next to the mark in all publications, including on your website, posters, advertisements, marketing materials etc. Look closely at some famous marks the next time you are out you and about; will usually see this symbol somewhere in the advertisement. While failure to use this symbol next to your mark will not give an infringer a defense that they did not have notice of your registered mark, it will stop you from claiming damages for the time period prior to when the infringer had actual notice of the charge of infringement, which can be significant. Thus, it will greatly increase your damages and thus your negotiating position if you can show that you were using this symbol with your registered mark.

If you do not have a federally registered trademark or have a pending application you should use the tm symbol next to goods and the sm next to services. Remember that the primary purposes for using the symbols are to put people on notice that you are protecting your trademark.

If You Have A Registered Trademark There Are Certain Ongoing Filing Requirements

Once you have registered your mark with the USPTO you must file a statement every five to six years during each ten year registration period proving that you are still using the trademark. If you fail to file this declaration, the USPTO will likely cancel your registration, despite the fact that your ten year term has not yet expired.

[1] For convenience, we will refer to both as “trademarks”.
[2] This memo addresses only protecting your marks domestically. There is a separate process to protect your marks internationally.
[3] Even without federal or state registration you have certain rights under common law that may protect your marks.

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