Trademark law is a statutory construct that has its roots in the concept of unfair competition. Its goal is to protect consumers by limiting the use of similar trademarks by different sources. My die-hard Diet Coke fans would be confused and upset if they purchased a product called Diet Coke that tasted, instead, like Diet Pepsi. We want consumers to be able to identify the source of goods or services – so when they rely on the Diet Coke brand name when purchasing soda, they know they can expect the Diet Coke taste.
Eligibility
A trademark can be nearly anything that acts as a source-identifier: a word, logo, color, or even a sound. Consider a few of the more unexpected registered marks:
:: NBC chimes
:: The color orange, as used by The Home Depot
:: Intel’s chord sequence
:: The color pink used for insulation by Owens-Corning
When you see or hear those marks, chances are you can identify the source.
Securing Protection
Trademark protection is secured first through the use of the mark in commerce. Even without a registration, mere use can establish limited common law rights in the mark. We require this because if the mark isn’t being used, there won’t be a likelihood of consumer confusion.
Applying for a trademark registration is the best way to secure protection for your mark. An application may be submitted to the U.S. Patent & Trademark Office (USPTO) based either on current use in commerce, or on the applicant’s bona fide intent to use the mark in commerce (this type of intent to use application is an exception to the normal rule requiring current use).
So what does “in commerce” mean? The simplest definition is that the “in commerce” requirement refers to commerce that Congress may regulate. In other words, interstate commerce.
Duration
Unlike copyright or patent protection, trademark protection is perpetual, as long as you continue using the mark. Filings attesting to your continued use in commerce are also required on a regular basis to keep your registration active with the USPTO.
Benefits of a Federal Registration
Nationwide Priority
Common law gives you rights to your mark where you are using it geographically. However, if another user registers the same mark federally, they can keep you from expanding your use of the mark outside this limited area. Such a scenario could stunt the growth of a small or mid-sized business that is hoping to expand nationally or even regionally. This is why nationwide priority is often considered the most important benefit of a federal registration.
Incontestability
After a period of five years of continuous use, a trademark may qualify for incontestability status. Incontestability doesn’t mean your trademark rights will never be challenged, but it does serve to eliminate some of the most difficult threats, including allegations that your mark is confusingly similar to another registered mark, that it is merely descriptive, or that consumers don’t associate your mark with a particular product or service.
If your mark is granted incontestability status, it may only be challenged because of things like fraud, genericide, abandonment, or prior use.
Treble Damages
In cases of willful infringement, you may be able to recover three times your actual damages.
Use of the ® Symbol
The ® registration symbol serves to put others on notice of your trademark use and rights in the way that the © does for copyright owners. If you’re properly using the registration symbol, an infringer can’t avoid monetary damages by claiming innocent infringement.
Deterrence
Not only will a trademark registration deter others from using your mark, but the USPTO will help you prevent it by refusing to register confusingly similar marks. In addition, a federal registration will help ensure that your mark comes up in the preliminary trademark searches conducted by a potential user.
Domain Assistance
If you’re the owner of a federally registered trademark, you may be able to stop a cybersquatter who’s holding your domain name hostage for thousands of dollars.
* Please don’t misconstrue this as specific legal advice. If you need help with your own unique situation, you may contact myself or another licensed attorney.
