WHAT ARE TRADEMARKS AND WHAT DO THEY PROTECT?

Trademarks protect the elements that define a company’s products, services, and brand. Words, symbols, logos, and slogans are all trademarkable. As you grow your business, you will depend on trademarks to distinguish yourself from competitors and build familiarity with consumers, who will begin to associate your “marks” with your company and its offerings. Not all words and images will qualify for trademark protection, however.

To be eligible for trademark protection, a “mark” must be:

• Distinctive: Determining whether a mark is sufficiently distinctive can require a thorough understanding of the details of trademark law. Broadly, a mark must not be too similar to an existing mark. If a consumer is likely to confuse one mark with another, it is unlikely to be considered distinctive.
• Used in commerce or about to be used in commerce: You must already actively be using the mark for commercial purposes or demonstrate a genuine intent to imminently use it for commercial purposes. You cannot get trademark protection if you do not intend to do anything with a mark.

The United States handles trademarks on a “first-to-use” basis, meaning a person or entity will get some basic trademark protections automatically if they are first to use a distinctive mark in a commercial market. Keep in mind that these “common law” protections are inherently limited. You will have a much tougher time enforcing your intellectual property rights if you are relying exclusively on common law protections, for example. Common law rights also only cover the geographic area where your business is located and operates, so if you attempt to expand into new markets, you could encounter issues if someone else is using a similar mark.

To fully protect your brand and ability to expand, you should promptly register your trademarks with the United States Patent and Trademark Office (USPTO). Our trademark attorneys can help you choose marks that are unlikely to trigger conflicts and guide you through the registration process.

When you register a trademark, you give everyone in the United States “constructive notice” of your intent to use the mark in commerce, which makes it substantially easier to prevail in litigation. You will gain the right to exclusively use the registered mark nationwide. After five years of sustained, registered use, you can also petition to make your mark “incontestable,” which means your ownership will be indisputably established in federal court. When an incontestable mark is infringed, you may be able to secure triple damages and legal fees.

WHEN DO TRADEMARKS EXPIRE?

Unlike copyrights, which protect original works of authorship, and patents, which protect inventions, trademarks do not expire after a certain amount of time has elapsed. If the right steps are taken, a trademark can last indefinitely.

For a trademark to remain valid, you must “maintain” it by continuously using the mark for commercial purposes. If you let a mark fall dormant, it could be considered abandoned (meaning you lose the ability to enforce it) after three years of non-use.

Furthermore, you must file a section 8 declaration with the USPTO between five and six years after your trademark was registered. This declaration reaffirms that the mark is still being actively used.

Ten years after your trademark was registered, you must provide a similar declaration as well as evidence that your mark is being used for commercial purposes. You will need to submit similar evidence every subsequent ten years to maintain your trademark.

WHAT CAN I DO IF SOMEONE INFRINGES MY TRADEMARK?

Should another person or organization attempt to use one of your marks without your permission, you have the right to take legal action against the infringing party and recover damages. Again, you will have a much easier time enforcing your rights if your trademarks are registered. If your intellectual property rights were violated, our trademark lawyers will fight to get you compensation for:

• The defendant’s profits (any money they illicitly gained by exploiting your trademark)
• Actual damages (such as lost profits, reputational damage, corrective advertising, and reasonable royalties)
• Legal fees

At Potts Law Firm, it’s all about our clients. We are here for you if you find yourself accused of violating someone else’s trademark or discover another party is causing consumer confusion through the use of marks substantially similar to yours. With over $1 billion recovered for our clients, our attorneys have an exceptional track record of delivering wins if litigation becomes necessary.