Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Trademark Registration Essential to Brand Protection: Just ask Michigan State University

How important is trademark registration with the USPTO?  The recent attention given to Michigan State University’s decision to apply for a new Spartan logo with the United States Patent and Trademark Office (USPTO) exemplifies the importance of brand identity.  The MSU athletic department, in conjunction with Nike, has apparently decided to ultimately stay with the current Spartan head design logo, as noted in a recent MSU athletic department press release.  Here are some trademark registration lessons we can all learn from MSU's effort to decide and protect on a new design for its Spartan Logo.

Trademark Infringement Risk Management

Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

Five Reasons to Obtain a Federal Trademark Registration

Traverse Legal's Trademark Attorney Brian A. Hall discusses how to trademark and several benefits of obtaining federal trademark registration in his article titled "Five Common Situations Where You Would Want a Federal Trademark Registration,” wherein he discusses the following top five situations where a federal trademark registration is helpful.

Copyrights, Trademarks and Intellectual Property Protection

In a July 30, 2008 radio interview (you can listen at http://www.tcchamber.org/programs/wef.php), Attorney Enrico Schaefer of Traverse Legal answered questions regarding the protection of intellectual property.  The following is a transcript of that interview:

Welcome to the Traverse City Area Chamber of Commerce’s Entrepreneurial Focus, sponsored by the Traverse City State Bank.  Now, here’s another success story with your host, Ron Jolly.

Announcer:  Welcome to the Traverse City Area Chamber of Commerce’s Entrepreneurial Focus, sponsored by the Traverse City State Bank.  Now, here’s another success story with your host, Ron Jolly.

Ron Jolly:  WTCM News Talk 580.  Welcome to the Traverse City Chamber of Commerce Enterpreneur Focus brought to you by the Traverse City State Bank, and every week we feature an actual entrepreneur, somebody who has gone out there, taken the risk and started their own business, created jobs in the marketplace, and continues to grow the business, and when we’re not hearing their stories every other week, we have experts in to talk about various issues in the business community, some free advice as we like to say.  Today, Enrico Schaefer is our guest.  He is an expert with copyright law, trademark and patents, and he is with traverselegal.com.  We’ll meet Enrico Schaefer in a moment and talk a bit about that.  If you have questions related to that in your business, you can call us today, too, with your questions.  947-0023 or 800-817-0580.  We’ll be right back on the Traverse City Chamber of Commerce Entrepreneur Focus.

Chicago Tribune Says That Trademark Registration Is Important to Protect Brand Identity

The Chicago Tribune has posted a great introductory article on the benefits of trademark registration.  The article describes the availability search, the registration process, and even the geographic limitation of common law rights.  Most importantly, it recognizes that trademark registration isn't an easy or risk free process:

Failing To Assert Trademark Rights in Timely Fashion Will Give Opponent Doctrine of Laches Affirmative Defense

Failing to assert your trademark rights within a timely fashion will prejudice you down the road.  The doctrine of laches, an affirmative defense in trademark proceedings, is used by courts or the TTAB to refuse to hear a claim or recognize a right that was not asserted within a reasonable amount of time.  The Trademark Trial and Appeal Board has used the doctrine of laches to refuse a petition for cancellation that was filed 62 months after a registration was issued.

Now is the Time to Trademark: Your Business Depends On It

A recent article entitled We’re Running Out of Brands by Jack Trout highlights the importance of branding, and more specifically, a trademark for that brand.  If you don’t believe Jack Trout, you may want to look at the quotes he includes (internal hyperlinks removed):

A booklet from Johnson & Johnson says: "Our company's name and trademarks are by far our most valuable assets."

The former chairman of Quaker Oats says: "If this business were to be split up, I would be glad to take the brands, trademarks and goodwill, and you could have all the bricks and mortar--and I would fare better than you."

A former commissioner of the Patent and Trademark Office said that a trademark is "frequently a more valuable asset of a business than all other assets combined."

Trademark Holders Beware: First In Time, First In Right Still Has Weight When It Comes to Domain Name Registrations

Owning a trademark, be it common law rights or a trademark registration, does not necessarily entitle a business or individual to the corresponding domain name.  A domain name registration of another's trademark or incorporating that trademark into a domain name does not always mean a trademark holder can successfully sue a domain name registrant for cybersquatting.  Domain name registration is still on a first come, first served basis.  A domain name registration that is first in time confers rights upon that domain name registrant if you are not a cybersquatter whereby a trademark holder can establish rights that predate the domain name registration. 

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.

Should I Register My Common Law Trademark?

Is registration of my mark required?

No. 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, e.g.,

• constructive notice to the public of the registrant's claim of ownership of the mark;
• a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
  
  

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.