Enforcing Your Trademarks and Servicemarks

What do chapstick, a thermos and aspirin have in common? These iconic brands used to be protected by trademarks, but lost their legal rights over time. Unfortunately, the rightful owners of these brands were not aggressive enough in protecting their images. Now, the brand names that they created are used as generic terms in popular culture. So the original owners of these brands can no longer stop anyone from using their names. It’s too late.

Although I’ve provided some famous examples, the same type of trademark loss can occur with your brand if you’re not careful.  While it is extremely important to shield your image by obtaining trademarks and/or servicemarks, you can’t just stop there. The fact is, you always need to be on the lookout for any infringements. Quite honestly, the welfare of your business is at stake.

To give you a better understanding of what could happen if you don’t watch over your trademarks or servicemarks, there are three practical reasons for being vigilant:

·        Confusion in the marketplace – If another business, knowingly or unknowingly, starts using your image, consumers could become confused about your name. You may wind up missing out on potential revenue because clients accidentally turn to your competition, thinking they’re coming to you. So it’s critical that you always protect your name, your distinction in the marketplace, to eliminate the possibility of your brand getting blurred and the valuable distinction of your business product or service being lost. Furthermore, if you don’t take action in this scenario, you will eventually be seen from a legal standpoint as having abandoned your marks.

·        Dilution of your brand – If you become lax and don’t object to other businesses using your name or some aspect of your brand, you also run the risk of your image being diluted. The result is that your unique and distinct name won’t mean anything anymore because so many other businesses share it. This can and should be stopped before the potency of your name becomes meaningless in the marketplace.

·        Financial losses – If you don’t stand up for your marks, it’s very possible that other businesses could be financially benefiting from your advertising by poaching your potential customers. That’s because they’re openly using your name to make money.

The logical conclusion is that you need to be ready to enforce your trademarks and servicemarks at a moment’s notice. When you discover another business is ignoring your rights as the holder of these marks, then it’s time to take action.

Steps to Take

Once you discover that someone has used your name, the response is very simple: Immediately contact an intellectual property attorney in order to issue a cease and desist letter to the infringing party. The purpose of this letter is to give this individual or company notice that what they’re doing violates your intellectual property rights and constitutes an illegal use of your brand.

Included with this letter, your attorney will provide a copy of your pending or existing marks to supply undeniable proof of your brand ownership. Furthermore, the letter will make clear that the offender needs to stop using your mark without delay.

If this violation persists after a five-day period, then it’s time to go to the next level. Your attorney will promptly seek legal action to enforce your rights in either state or federal court under a trademark or servicemark infringement claim. This process involves getting a restraining order, which stops the entity from stealing your mark.

Secondly, your attorney will seek a court order that will compel the infringing business to divulge all of the financial gains that it received from illegally using your brand. Once this information is disclosed, you will then seek a court order that awards to your business, all of the profits made by the infringing party, because these profits rightfully belong to your business. And as a final kicker, you are entitled to seek reimbursement from the infringing party for all of the attorney fees that were caused by this unlawful infringement.

In Conclusion

By taking the time and investing the money to obtain trademarks and/or servicemarks, the image of your business is protected. But, the reality is that a clever company can find ways to benefit from your brand, even if you’re the legal owner. For this reason, I recommend that you periodically perform a search online to determine if anyone is illegally using your intellectual property. If you discover an infringement, contact your intellectual property attorney.

 

 

 

Understanding Trademarks and Servicemarks

In my last blog, I explained the importance of protecting your business’ image once you begin to expand. The goal is to make sure nobody can come along and steal your brand out from under you. And this can be accomplished by obtaining trademarks and servicemarks for your company’s unique presence in the marketplace. Generally speaking, trademarks are meant to guard a unique product created by your business and servicemarks are designed to protect a unique name, logo or tagline that identifies your business.  If you’ll recall from my previous blog, logos, designs, slogans, taglines and even domain names all fall under trademark or servicemark protection.

But there is much more to getting this legal coverage than you might think. For this reason, I want to go into greater detail about the process of attaining trademarks and servicemarks for your business.

State Protection

Let’s say your business is based in Chicago and it’s really starting to grow and gain much needed visibility in the marketplace. At this point, you should consider investing in the necessary protections so that nobody can steal your brand.

The good news is that you can safeguard your brand very easily by going online. The State of Illinois streamlines the procedure by providing all of the required applications that you need to fill out. For a $10 fee, you may submit your application and if approved by the Secretary of State, you will be awarded the exclusive right to use your.

However, even though your brand can’t be touched within Illinois, someone just ten miles southwest in Indiana could appropriate your brand. That’s because the applications you sent to the Illinois Secretary of State do not protect your company’s image beyond Illinois. So you might think about registering your brand in nearby states such as Indiana and Wisconsin as well.

National Protection

But what if your company continues to grow and quickly becomes recognized in other regions of the country? You could take the time to send in trademark and servicemark applications to each state that potentially touches your business. Keep in mind, though, that the costs and the time investment may add up faster than you might think.

So, a more economical option may be to seek federally registered servicemark and/or trademark protection through the United States Patent and Trademark Office (USPTO) in Washington DC. By taking this route, you’re applying for the exclusive right to use your brand in all 50 states and to have the right to stop someone from stealing your brand even if you are not currently doing business in that state. The federal application process is understandably longer, because the USPTO must conduct an initial search of its federal records to determine if any other businesses are already using a brand similar to your own. An examiner in Washington then has to do his/her own due diligence to provide a thorough investigation and ensure that nobody else owns or has applied to own, a brand similar to your brand.

In addition, the federal agency publishes your proposed brand name, logo and/or tagline in a national magazine. This publication is then sent to every intellectual property attorney around the nation. If your image is already in use by another business across the country, you can be sure the lawyer who represents that individual company will inform USPTO immediately.

While applying for a federal trademark/servicemark does cost a significant amount of money due to application costs and other fees, your business’ brand will be protected nationwide. Furthermore, by going through this procedure, you’ll also find out if other companies may already be using your brand, thereby avoiding possible future infringement claims against your business and your loss of the right to use marketing materials (Web site, letterhead, business cards) relating to this already owned brand. The result could be that you decide to tweak or slightly revise your brand. Then you may have the potential to stand out even more in the marketplace.

Copyrights

While your brand can be adequately protected by state or federal trademark/servicemark registrations, your business may also seek copyright protection of your brand images and taglines. By obtaining this type of protection from the U.S. Copyright office, you will be shielding original works that are published or unpublished. Typically, copyrights are designed for literary, musical, visual or other kinds of artistic creations. If this applies to your business, it may be wise to obtain a copyright.

But copyrights are a form of protection for the authors of “original works of authorship.” As such, a copyright may not cover titles, names, short phrases and slogans, lettering or coloring unless such image or information is sufficiently original and complex. For example, the Nike “swoosh” logo is extremely simple and would not qualify for copyright protection even though the image is protected as an invaluable trademark.

On a Final Note

The notion of obtaining trademarks and servicemarks can seem overwhelming at first. But it is not a complicated process. If you want to get this type of protection on a state-by-state level, you can get the applications online and fill them out by yourself.

On the other hand, if you’d prefer not to cherry-pick and you need protection that covers the entire country, I advise you to seek the expertise of an experienced intellectual property attorney. The interactions with USPTO and the federal examiner are much more involved than the simple state application process. So this is not something you should undertake without legal counsel.