Whether you are a manufacturer, distributor, or contractor, your brand is essential. Often a person’s or company’s brand is represented by a trademark – a word, picture, or symbol that identifies a source. The following is a summary of trademark basics everyone should know, including how to protect your brand and what to do if others use the same or a similar trademark.
Trademark Basics
According to the United States Patent and Trademark Office (USPTO), a trademark is generally “a word, phrase, symbol, or design, or a combination thereof that identifies and distinguishes the source of the goods of one party from those of others.” One example is McDonald’s “golden arches” or Starbucks’ “mermaid.” Similarly, a service mark is the same as a trademark, but refers to protecting the source of a service rather than goods.
Benefits of the federal registration include a legal presumption of ownership and an exclusive right to use the mark in connection with your organization’s goods or services. While legal rights to a trademark begin when a mark is first used (known as “common law” rights), registering the trademark at the federal level with the USPTO is recommended.
Trademark protection prevents your organization’s name or identifying feature from being used by a similar organization. Trademark registration also helps the consumer differentiate between organizations. Consumers have a specific expectation regarding an organization’s level of service and quality based on the brand name or logo associated with the organization. A competitor using your brand name or logo can create a false impression and confuse a consumer, which is a disadvantage to your organization and a potential advantage to the competitor organization. Obtaining trademark protection is a great tool to protect your organization’s reputation.
The following is a list of best practices to protect your trademark:
Conduct a Trademark Search
Before using a new trademark, you should talk with your attorney about executing a search on the USPTO’s website to confirm that there is not another identical or closely similar mark already registered. If there is an identical or closely similar mark, evaluate whether the good or service is the same or similar to your good or service. Your attorney can best advise you on when it is “all clear” that your trademark is not being used by others.
File an Application
Work with your attorney to file an application. The filing cost is approximately $350 plus legal fees. If obtained, registration is good for 10 years.
Use of “TM” or “SM”
Use of “TM” as a trademark symbol does not mean that the organization using the mark actually owns any federal trademark rights in the specific trademark; however, this symbol can be used with the trademark while your application with the USPTO is pending (which may be as long as nine months). Use “TM” for any good and use “SM” for any service – often put in superscript after the trademark such as GREAT FLOORS™.
Use of ®
Upon approval by the USPTO, the organization can use “®” with the trademark, which denotes that the trademark has been registered under federal trademark law. Use of ® also provides communication to other organizations that your mark is federally registered and thereby wholly protected.
“Police” the Use of your Mark
Be sure to set up a “watch” service – such as Google Alerts – to find out who may be using the same or a similar mark. If an alert finds an individual or organization who may be using your trademark, be sure to confer with your attorney to determine whether a cease-and-desist letter should be sent to the infringing party.
Quality Control
Use without quality control can be deemed a “naked” license (permission) or abandonment of the trademark, leaving the trademark owner with no ability to claim ownership or control the use of the trademark.
One of the best ways to protect your trademark is to insist that the mark is used in exactly the way it is registered with the USPTO. Large events are very public and busy environments in which to market your organization’s services and programs. Using your brand name or logo in a different way than it is registered puts the trademark at legal risk and can be deemed “abandoned.”
License Agreement
If you allow another person (such as a nonemployee) or business to use your trademark, have a written license agreement that gives permission – but puts controls on – the use of that trademark.
Obtaining a trademark registration plays a fundamental role in protecting business names and brands. Be proactive and knowledgeable about what trademarks your organization currently owns. Be vigilant if you believe a trademark is being used by another organization incorrectly. As always, be sure to contact your attorney should any question or issue arise about your trademark.
Barbara Dunn O’Neal is a Partner with the Associations and Foundations Practice Group at Barnes & Thornburg, where she concentrates her practice in association law and meetings, travel, and hospitality law. She can be reached at 312.214.4837 or barbara.dunnoneal@btlaw.com. Matthew E. Misichko is an Associate with the Associations and Foundations Practice Group at Barnes & Thornburg. Matthew can be reached at 312.214.4827 or matt.misichko@btlaw.com.