Tuesday, 15 January 2008

What Are Benefits of Trademark Registration?

Trademark Registration is not required in order to have trademark rights.  But registering your trademark gives you some advantages.  Trademark Registration Attorney Brian Hall provides an overview of the prerequisites needed to obtain a valid trademark registration with the USPTO.

  • The benefits of achieving trademark registration are many, including: nationwide priority, easy identification, deterrence, presumptions, and the availability of statutory damages.
  • The return on investment for trademark registration is potentially huge as names, marks and brands continue to achieve high market value.
  • Without registration, your trademarks will be much more difficult to protect from infringement.

Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement and trademark registration. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

JOHN: Today we are in the studio with Brian Hall of Traverse Legal of Traverse City, Michigan. Brian is an trademark registration attorney.  

JOHN: What is a trademark?

BRIAN: A trademark is basically a word, symbol, or a phrase used to identify a particular manufacturer or a seller's products or whatever good they're producing. There are two areas of trademark law.  The first being state law and when we're talking state law, obviously, it could be Michigan, New York, California,Texas, Florida, etc. And then there's federal law, known as the the Lanham Act which is a piece of legislation that is strictly dedicated to trademark law.

JOHN: And how does someone know if they have a trademark?

BRIAN: The moment someone starts offering goods or services to the public under a name or brand, they have trademark rights.  If you see a small "r" in a circle, that's showing that the owner has a trademark and, in fact, it is a registered trademark. A trademark is a way for a company to distinguish themselves from another company.

JOHN: How does someone go about obtaining a trademark registration?

BRIAN: First thing that you really need to know about that is there's really two ways that you can establish a trademark for yourself. When we're talking about trademarks, a person/individual can own a trademark, a company or an organization can own a trademark.  In order to get a trademark, you have to be the first to use a particular mark in commerce. And when we say in commerce that simply means you're selling something under that mark. The second way that you can get one is really what I want to talk about here today. And that's doing a filing  a trademark registration with the United States Patent and Trademark Office. By filing with the USPTO, you're automatically given the benefits of the federal law. Try to work with a trademark registration attorney who can help you put together the information that's required by the USPTO.

JOHN: What's the difference between a trademark and a patent or even a copyright?

BRIAN: A trademark identifies a particular manufacturer or sellers products and allows them to distinguish their product or their service from someone else's. A copyright is an original work of authorship. So a music composition is an example of a copyright. A patent is an original and innovative invention or process.

JOHN: Now I also have a name for my music or my website, for that matter, www.bfbmusic.com. Would "BFB Music" be considered a trademark?

BRIAN: The first question you need to ask when you're looking at a trademark is: number one is it distinctive? So if you go out there and there's a bunch of other people using BSB Music, then most likely it's not distinctive because it's not capable of identifying the source of a particular good, namely you're services and the music you're providing. 

JOHN: Now, we're talking trademark law today, and we've been talking about how to get one, what it is, and how people know they have one. Now, why would I want to have my trademark registration filed with the USPTO?

BRIAN: The top 5 reasons you would want to trademark is pretty straight forward. First, registration gives the mark owner nationwide priority.  Registration gives you a priority date if you are considering filing in another country. The second reason trademark registration is important is identification in the market.  Consumers will identify your brand with your product or service. So, it really forces the trademark holder to be held accountable for the product or service that that trademark or service mark represents. The third reason that I say is it provides public notice that you are claiming trademark rights. which is very important because others will have a better chance of staying clear of your registered trademark. I talked about earlier how if you see the McDonald's sign you see the small "r" with a circle around it showing that that person has a registered trademark. That puts someone on notice that they can't go out and use the same trademark to sell hamburgers, or french fries, milkshakes, etc. Fourth, registration provides certain presumptions under trademark law. When you file a trademark, and the USPTO allows it to be registered, you receive a presumption of validity and the potential for statutory damages.  By having a trademark filed with the USPTO, you may be entitled to treble damages plus attorney fees for bad faith infringement. Treble damages mean three times the actual damages that you sustained by somebody infringing upon your mark, or diluting your mark, or taking your mark and using it as part of their domain name. So, to review,  - You get nationwide priority, easy identification, notice, presumptions, statutory damages and other treble damages.

COMMENTS

Great info, I will bookmark your blog and follow your future content. Are you allowing us to post any internet access to your blog? If so any referrals?

thanks

If you want to protect your IP, you must obtain a trademark registration for all brands and company names. Without registration, you will not have the leverage you need to protect against trademark infringement.

Wich intellectual is against "intellectual property" or trademark? Ofcourse,every intellectual supports it and every ignorant doesn't give a damn on "intangibile assets".

It is pretty important to trademark intellectual property. Intangible assets are as valuable as tangible assets.

Secondary meaning is the connection in the consumer's mind between the mark and the provider of the product or service. Ice Cold Auto Air of Clearwater, Inc., 828 F. Supp. at 931( citing Investacorp, Inc., 931 F.2d at 1525). To prove secondary meaning, the plaintiff must demonstrate that "the primary significance of the term in the minds of the consuming public is not the product but the producer." Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir. 1979). A high degree of proof is necessary to establish secondary meaning for a descriptive term which suggests [**24] the basic nature of the product or service. American Telev. & Communic. Corp. v. American Communic. & Telev., Inc., 810 F.2d 1546, 1549 (11th Cir. 1978). Secondary meaning exists if a substantial number of existing or prospective customers understand the designation when used in connection with a business to refer to a particular person or enterprise. Perini Corporation v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990); Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301 F.2d 156, 160-61 (4th Cir.1962). If a trade name has not acquired secondary meaning, the purchaser will not make an association with a particular producer and thus will not be misled by an identical or similar mark. Thompson Medical Co., 753 F.2d 208, 216 (2d Cir. 1985). A plaintiff may prove secondary meaning by a variety of methods. The following factors are relevant to a secondary meaning inquiry: (1) the length and manner of use; (2) the nature and extent of advertising and promotion; (3) the efforts made by plaintiff to promote a conscious connection with the public's mind between the name and plaintiff's product; and (4) the extent to which the public actually identifies the name with [**25] plaintiff's product. Coach House Restaurant, Inc., 934 F.2d 1551 at 1560; Invesstacorp., 931 F.2d at 1525 (citing Conagra v. Singleton, 743 F.2d 1508, 1513 (11th Cir. 1984)). Although secondary meaning may be proved by customer survey evidence, a survey is not required. See Aloe Creme Labs., Inc., v. Milsan, Inc., 423 F.2d 845, 849 (5th Cir. 1970); Home Savings of America, 219 U.S.P.Q. at 159.

A suggestive mark suggests some characteristic of the product or service to which it is applied, but requires the consumer to use his imagination to determine the nature or the product or service. John H. Harland Co., 711 F.2d at 974. See also Great Southern Bank, 625 So. 2d at 467(suggestive marks include Artype for cutout letters for artists,
[*1357] Coppertone for sun tan oil, Gobble Gobble for processed turkey meat, and Heartwise for low-fat foods). Because a suggestive mark is inherently distinctive, it can be protected without evidence that it has acquired secondary meaning. Id. An arbitrary or fanciful mark bears no relationship to the product or service with [**22] which it is associated. See Great Southern Bank, 625 So. 2d at 467(for example Ivory Soap is not made of ivory, Old Crow whiskey is not distilled from old crows, and Royal baking powder is not used exclusively by royalty). A purely fanciful or arbitrary mark is generally considered strong and is given protection over a wide range of related products and variations of the mark. Id. (quoting 1 J.T. McCarthy, Trademarks & Unfair Competition section 11:24, at 398 (1973). A composite mark is tested by looking at it as a whole, rather than by separate parts. Great Southern Bank, 625 So. 2d at 469.

A descriptive mark identifies a characteristic or quality of a product or service, such as its intended use, ingredients, dimensions, or desirable features. See, e.g., Investacorp, Inc., 931 F.2d at 1522-23(Barn Milk is a descriptive term).
Descriptive marks include marks that are simply descriptive, laudatorily descriptive, and geographically descriptive. See Great Southern Bank v. First Southern Bank, 625 So. 2d 463, 468 (Fla. 1993)(friendly, dependable, preferred, first, and great are examples of laudatory descriptive marks; southern is geographically descriptive). A term that is likely to be perceived by prospective purchasers as merely descriptive of the nature, qualities, or other characteristics of the product or service, or as a mere geographical description of the origins of the goods or services, or as the personal name of a person connected with the goods or services, is not inherently distinctive. Restatement (Third) of Unfair Competition section 14. A descriptive term is not automatically protectable, but it may achieve that status once it has acquired a secondary meaning. Ice Cold Auto Air of Clearwater, Inc., 828 F. Supp. at 931.

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How to Trademark A Name?

  • How to Register a Trademark - USPTO Stopfakes.gov
    You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages ... here is how.
  • Types of U.S. Trademarks - USPTO Stopfakes.gov
    Specific types of trademarks include: Service marks which identify and distinguish the source of a service rather than a product; Certification marks are used by someone other than its owner, to certify quality or other characteristics of such person's goods or services; Collective marks are trademarks or service marks used by the members of a collective group or organization.
  • Definition of a "Trademark"- USPTO Stopfakes.gov
    A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
  • How To Copyright and Trademark a Catchphrase!
    Wondering how to trademark a catchphrase? You should also think about how to copyright a catchphrase. Some intellectual property can be protected by both a trademark and copyright registration.

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