This is a continuance of our four part discussion of intellectual property. Last month featured a discussion of copyright law.
Last month, our newsletter discussed copyright protections for works that are put into a tangible form, such as books, movies, songs, drawings, and photographs. Copyright is automatically granted to the creator of the work the moment the work is created. However, subsequent registration with the U.S. Copyright Office can be beneficial to put the public on notice of your rights in a work. This registration is also a requirement in order to recover statutorily prescribed damages and attorney’s fees and costs if you ever have to bring suit against an infringer.
This month, we focus on trademarks, which are words, symbols, phrases, or other identifiers of a product or brand. Examples of trademarks are the Nike swoosh, Starbucks’ green mermaid, and the U.S. Marine Corps’ “Semper Fi.” Each of these conjures up in the mind of the consumer the corresponding company, and represents the company’s reputation, goodwill, and brand identity. The purpose of trademarks is to distinguish your company and your products from those of another company, especially to consumers.
Similar to the U.S. Copyright Office’s role in registering copyrights, the U.S. Patent and Trademark Office (USPTO) registers trademarks. In order to successfully register a trademark, the USPTO must find there is little to no likelihood of confusion with other, previously registered trademarks. But, if there is another trademark similar to yours which is already registered, all is not lost. The USPTO may still register your mark if the goods and services to which your trademark will relate are substantially different than those covered by the previously-registered trademark. For example, if the existing trademark is related to t-shirts and pants, and your trademark is related to hats and scarfs, the USPTO will probably find there is a likelihood of confusion between the two marks. However, if the existing trademark is for mortgage lending services, and your trademark is related to hats and scarfs, there will be no likelihood of confusion.
There are four classes which your trademark may fall into: fanciful or arbitrary, suggestive, descriptive, or generic. The USPTO favors those trademarks that are fanciful or arbitrary the most, and those that are generic the least. As an example, while Apple’s logo may seem generic (because what is more common than an apple?), the Apple logo is entirely arbitrary to the goods it is related to: computers and electronics. Thus, Apple’s logo falls into the fanciful or arbitrary category, and is registered by the USPTO.
To register your trademark with the USPTO, you should first check the USPTO’s electronic search system database to ensure there are no trademarks already registered that are similar to yours. Online searches for companies using unregistered marks similar to your proposed mark are also suggested, as pre-existing users have certain trademarks rights to a mark whether registered or not. Next, you can submit an application to register your trademark online, inputting your information along with the categories of goods and services to which the mark will relate, the date of the trademark’s first use in commerce, and whether there is a design component to the trademark. The cost of the filing of the application is between $225 and $325. Within about six months of submitting your trademark application, the USPTO should approve or disapprove of the trademark.
Similar to copyright, trademark registration is not required but it is suggested if you think your trademark is likely to be infringed upon. In enforcing your trademark against any infringers, having registered with the USPTO makes your enforcement action easier and more likely to be successful. That said, registration is not the end all for trademark rights. In fact, if someone has been using a trademark continuously since before you registered or began using your trademark, the original trademark will likely take precedent over your claims to use your trademark (at least within the geographic area in which the pre-existing user has been using its common law trademark).
If you would like to explore the option of registering your trademark, or you think someone may be infringing on your trademark, call the attorneys at Navigato & Battin.