Trademarks and Service Marks
Trademarks and service marks are important to businesses as they distinguish a company from others and are vital to having names, designs or phrases recognized by the public for marketing purposes. These are typically known as brand names, logos or trademarks.
Trademarks and service marks are terms often used interchangeably. Trademarks are words, phrases, designs, symbols or any combination of these that identify the source of a product (such as juice) as being from one party. Service marks are similar but are used to distinguish the source of a service (such as real estate development) rather than a product.
While there is no requirement that you register your trademark or service mark, there are numerous benefits from owning a federal trademark registration on the Principal Register of the U.S. Patent and Trademark Office:
• The presumption of validity;
• The public is put on notice of your ownership of the mark;
• You have the exclusive right to use the mark within the country in connection with the goods or services listed in the registration;
• You can use your registration to obtain foreign registration;
• You are listed in the U.S. Patent and Trademark Office (USPTO) database;
• You can bring a claim or lawsuit in U.S. federal court for infringement of your mark;
• You can use your registration to record it with the U.S. Customs and Border Protection Service to prevent foreign goods from entering this country if they infringe on your goods.
Any claim of infringement of your trademark is typically based on the argument that there is a likelihood the public will be confused regarding the source of the product or service.
The court will look at several factors:
• The similarity of the trademarks;
• The uniqueness and strength of the symbol, name or logo;
• Evidence of consumer confusion;
• The proximity of the goods or services offered;
• How the goods are marketed and if similar trade channels are used;
• The intent of the defendant or reason for using the trademark.
A copyright protects your original artistic or literary work so that others may not use it in their own work without your permission. This includes music, writings, websites and computer programs.
You have added protection by registering your work with the U.S. Copyright Office and you may only bring an infringement suit if it is registered, which also enables you to record your work with the U.S. Customs Service.
By registering you also have other advantages:
• If made within 5 years of publication, registration establishes prima facie evidence of the validity of the copyright.
• If made within 3 months after publication of the work or before an infringement of the work, you have the benefit of the ability to recover statutory damages and attorney’s fees in any court action.
• You can collect actual damages and profits if registered.
Copyrights registered with the U.S. Copyright Office last for the life of the author plus 70 years during which time no one else can profit from or copy your works or ideas without your permission.
Do You Need an Attorney?
It is advisable to consult an attorney before applying to register a mark with the U.S. Patent and Trademark Office. You will also need an attorney if your mark is infringed upon and a claim in federal court is necessary to enjoin the infringer and to collect lost profits, statutory damages and attorney’s fees. It is recommended that you use an attorney for all of your intellectual property transactions and applications.
An attorney can perform a comprehensive trademark search for potential problems and advise you on the likelihood of successfully registering your mark.
You must be careful to meet all requirements of filing your registration found within the Trademark Act and Trademark Rules of Procedure. These can be confusing and failure to follow these procedures will result in denial of your application for registration.
An attorney from Latham, Shuker, Eden & Beaudine, LLP can help you not only to follow carefully prescribed substantive and procedural rules but can draft the trademark application and carefully describe your product and review your specimens and drawings to ensure they meet the requirements of the U.S. Patent and Trademark Office.
Our attorney can respond to any objections the USPTO may have and draft a brief in support of your mark if needed. Our intellectual property partner has been handling trademark registration for our clients for many years and is well versed in what the USPTO requires and looks for in approving a trademark application.
We provide the same kind of counseling and support regarding copyright applications and registrations for our clients and in protecting their rights such as using takedown notices under the Digital Millennium Copyright Act to have individuals and businesses remove appropriated content.
• Trade Secrets and Trade Dress
Trade secrets are obviously valuable to any business and can be stolen by an ex-employee or rival company. These may include customer lists, certain drawings or even keywords. Our attorneys have been involved in trade secret pre-litigation counseling and litigation practice that have adequately protected our clients and enabled them to enjoin illegal activities and to continue their profitable enterprises.
Trade dress refers to a feature of goods or services that distinguishes them from others. It can be the color of a package, its graphics, size or shape. A well-known example is the color scheme of a McDonald’s restaurant or its yellow arches. These can be difficult to register since they can be hard to express in an application, and the advice of an attorney is recommended.
Ensure that your intellectual property rights are securely registered and protected by retaining an intellectual property attorney from Latham, Shuker, Eden & Beaudine, LLP. With years of successfully protecting the original works and brands of our clients, you
can be assured of having your coveted goods, services, artworks, music and brands protected, to earn the profits you deserve.