Timing often doesn’t play a significant role in trademark filings. Because localized rights automatically arise through trademark use, an effort to expand those rights by obtaining a trademark registration is often driven by other factors.
In many cases, that works out fine. But in some, trademark owners should be more strategic — particularly with regard to timing. Here are three situations in which it pays to be smart about when to make trademark filings.
1. Beat third-party filers. Before alerting third parties about your trademark rights (through a cease-and-desist letter or otherwise), make sure your trademark house is in order. Part of that effort may involve applying to register the trademark. Even if you used your mark first, complaining about a third party’s infringing use may motivate that party to get their trademark house in order, too. If they beat your trademark filing by even a day, their application will be considered first. That risks delaying and even blocking your application, even if you have superior trademark rights. (Less nefariously, the same is true if a third party randomly happens to apply to register the same mark as yours.) Overcoming this obstacle can be a time-consuming and expensive undertaking. It’s so much better to avoid it by filing first.
2. Outsmart cybersquatters. Cybersquatters — people who register domain names on spec and make money selling them to trademark owners — routinely register domain names based on new trademark filings. They know if someone registers a trademark, they already have begun to invest in that brand. Cybersquatters rightly understand that many brand owners will pay a premium to own a domain name reflecting their name, particularly with the .com extension. Don’t let them profit from this logic. Trademark filings are public. Before showing your cards to the world, register your target domain name. Doing so before applying to register your trademark will ensure that your preferred domain name is yours — without delay and without enriching a cybersquatter.
3. Frustrate bad actors abroad. The United States is in the minority when it gives trademark rights to owners automatically through use. In most countries, the only way to get trademark rights is through registration. Like cybersquatters, free riders can take advantage of this norm by registering your brand in their country. Indeed, there’s nothing legally wrong with their doing so. Fortunately, there’s an easy solution: registering your trademark first. Doing so in the countries in which you manufacture and sell can eliminate the irony of infringing the trademark rights of someone who did nothing more than register your trademark first.
There’s a little-known way to maximize the value of a federal trademark registration — recording it with U.S. Customs and Border Protection.
Taking this extra step (and paying the $190 fee required to do so) puts your trademark on Customs’ radar screen. It helps put the government to work for you stopping counterfeit goods bearing your trademark at the border.
Besides alerting Customs about its mark, the owner of a federal trademark registration can provide additional information to help stop counterfeit goods from entering the States, such as the place authentic goods are manufactured; the authorized port of entry into the States; and what authentic goods look like. When Customs inspects goods bearing the registrant’s trademark that do not match this criteria, it will seize the goods and contact the trademark owner to determine whether the goods are real or fake.
Customs only inspects small percentage of goods that are imported into the States. To be sure, plenty of counterfeit goods make it through. But why not make it tougher on the counterfeiters? By working with Customs, you can leverage the value of your trademark registration and help the government help you.
Choosing the right trademark can be tricky.
There are lots of things to think about. But one principle can help guide proper trademark use: be proud.
Trademarks tell consumers that what you make or what you sell comes uniquely from you. If you’re rightfully proud of your business, you’ll want to stand out. You’ll want consumers to remember you. And you’ll want to keep copycats at bay. Strong trademarks help do all these things.
If you’re proud, you won’t want to ride on anyone else’s coat tails. You’ll want your name, logo, and tag line to set you apart. A bold trademark conveys confidence and strength. A common mark says you’re ordinary — one of many in a crowd.
If you’re proud, you won’t want to call to mind someone else’s trademark. Why distract the consumer with a mixed message, when it’s only you that you want consumers to remember?
Strong trademarks stick in consumers’ minds. Courts give them the broadest protection. The trademark office registers them, expanding their power.
So do what you can to stand out. Names that depend on industry jargon or mimic a competitor’s miss a great opportunity: signaling that your goods and services can only be purchased from you.
Selling something you’re proud of is the hard part. When you’re proud, selecting a powerful trademark is easy.
Clients often ask what form of trademark they should register.
Two words mashed together. Or with a space. Or a stylized version. Or a logo.
What’s the best form?
First, a trademark owner in the States doesn’t need to register its mark at all if it doesn’t want to. It automatically gets common law rights in the mark simply by using it in customer sales. When we talk about registering a mark — either with a state or with the U.S. Patent and Trademark Office — we’re talking about building on and expanding those automatic, localized rights that automatically arise through use.
Because of this, the form of use should drive what the owner seeks to expand through registration. That means if the owner uses two words mashed together in its advertising and on product packaging, that’s the form the owner should list in its application for state or federal registration. In other words, the use of the mark should drive the application.
That said, it’s usually to the owner’s advantage to apply to register the word form of the mark without any stylized format. The technical language to describe this form of mark is “standard characters without claim to any particular font, style, size, or color.” Describing one’s trademark this way on the application keeps the owner’s options open. In the future, as tastes change, the owner can change color or font or style, and as long as the new trademark still contains the word element, the new use will support the existing registration. That wouldn’t be the case if the owner applied to register a logo containing words, specifying the colors red and blue. If the owner down the road transitioned to a new logo with the same words in green and black, the owner would need to file a new application for registration to obtain the expanded trademark rights a registration offers.
In summary, the trademark used in a filing should follow the way the mark is used in the marketplace and, all things being equal, it’s usually best to apply to register the word form of the mark rather than a particular stylized form or logo. Doing so captures the maximum amount of intellectual property real estate, giving the trademark owner the most bang for its buck.
A reporter recently interviewed me about a trademark issue. The story, however, discussed the issue in terms of patent law.
That’s a common mistake. It goes to show that even sophisticated persons can confuse patents, copyrights, and trademarks.
This comes up in my practice all the time. Hopefully, it will help to set one category of intellectual property protection apart from the others. Here goes:
Trademarks- Trademarks are brand names. They tell consumers where the branded good or service comes from. It can be a name or word (like NIKE), a logo or design (like Nike’s “Swoosh”), or a slogan or tag line (like “JUST DO IT”). Trademarks can take other forms, as well, like a product’s shape or a restaurant’s interior — as long as the shape or interior points back to the maker or owner. Trademark law protects brand owners against later-comers from adopting marks that are likely to cause consumer confusion with the earlier-adopter. It keeps competitors at arm’s length so they can’t free-ride on the first adopter’s reputation. Trademark rights arise automatically by using a brand in customer sales, but an owner can expand its automatic, localized rights by registering its mark with a given state or at the federal level with the U.S. Patent and Trademark Office. Trademark rights can last forever — just as long as the owner continues to use the brand in sales.
Copyrights - Copyright law protects against unauthorized copying. Once the creator fixes a work in a tangible medium (usually by writing it down), assuming the work is at least minimally creative, the creator can stop third parties from copying, using, distributing, or adapting the work without permission. These protections arise automatically, but to enforce one’s rights, the author, artist, composer, or coder first must register the work with the U.S. Copyright Office. Doing so before the infringement occurs gives the owner additional protections. Copyright only protects the original expression embodied in a work; it does not protect stock elements or the work’s overall idea. Copyrights last for decades, but not forever. Once a work is “out of copyright,” it is in the public domain, enabling anyone to copy, use, distribute, or adapt it without permission or payment.
Patents- Patents are a government-issued monopoly. Unlike copyrights, they can protect an idea. They give the owner the owner the right to stop others from using the invention, process, or design covered within the scope of the patent. To qualify for protection, the work must be new, original, and useful (for a utility patent), or new, original, and ornamental (for a design patent). Utility patents last up to twenty years; design patents last fourteen. Once a patent expires, the subject matter falls within the public domain and may be used or copied at will (as commonly seen with generic drugs).
There are other forms of intellectual property protection, such as trade secrets, unfair competition, and an employee’s duties of loyalty and confidentiality. But trademarks, copyrights, and patents are the big three. They’re often confused, but they needn’t be.