Our attorneys have filed hundreds of trademark applications with the United States Patent and Trademark Office (USPTO) in addition to state and foreign trademark applications. There are many considerations prior to filing that our attorneys will discuss. Just some of the issues that we discuss involve clearance of the trademark, the goods and services, whether the application will be filed on a “use” (1a) or “intent to use” (1b) basis, design mark vs. word mark, or collective marks. These are just some of the issues that may arise.
What Rights Do Federally Registered US Trademarks Convey?
Upon issuance of your federally registered trademark, you have the following significant benefits:
- Nationwide constructive notice of trademark ownership
- Evidence of and a presumption of ownership
- Federal court jurisdiction (should you have to sue to prevent infringement)
- Federal registration can be used to obtain foreign registration
- The registration may also be filed with U.S. Customs Service to prevent importation of foreign goods that infringe on the trademark
Why You Need to Conduct a Trademark Search and File an Application
If you are ready to launch a new product, or you are about to start a new business, is it safe to use the proposed name you have picked as your trademark? It may very well not be. This is a typical scenario:
Company A opens its doors (a physical store and online) choosing a name without conducting a trademark search. Company A starts promoting its name by investing in advertisements (print and online such as Google adwords). Months go by and Company A is doing quite well financially, has invested a lot money in advertising and marketing, and its page ranking in Google and went up considerable for its desired terms (after spending a ton of money to search engine optimization marketing firms). Then one day, Company A receives a cease and desist letter from Company B’s attorney similar to this:
Company B is the owner of United States Federal Trademark Registration No. XX and other trademark registrations pertaining to this mark. Company B uses this mark in the United States in conjunction with its goods and services. Company B legally owns the trademark upon which your online store, products, and advertisement are infringing.
Company B believes that you are intentionally trading on the goodwill of Company B by using a trademark that is confusingly similar to Company B’s Trademark and that your use of the Trademark does, or is intended to confuse or mislead customers seeking Company B’s products or services. This activity is actionable under federal law and causes you to be liable to Company B in every state in which you have made sales or done business. Your activities are unlawful and constitute unfair competition, intentional trademark infringement and dilution, false designation of origin and/or cybersquatting.
Federal Law provides numerous legal remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, monetary damages, claim to a defendant’s profits…
At this point you may have limited options. Although you may be able to fight or settle in order to prevent your name from being taken away, it typically takes time and a lot of money. This is the sad scenario many business owners face when they neglect to take into account intellectual property rights of others.
Rather than being a victim to bad business practices, the proper way to proceed is to obtain a trademark search on each and every name you intend to use in connection with the goods and services your business is promoting. A competent trademark attorney can conduct the search and analyze the results to advise you whether or not you should use the name. If the name appears to be clear, then it is advisable to proceed with your own application for a trademark in order to serve as a defense and to be used offensively against would-be trademark infringers.