Entries in Federal Trademark Registration (4)
Believe it or not, trademark law is here to serve you. Therefore, you should let the market guide your decisions in what trademarks to register and what enforcement actions to take.
Much of trademark law is optional. You don’t need a federal (or state) trademark registration. Getting a registration can be smart, but it’s not required. So, let the cost guide you in deciding whether it’s worth the effort.
The same is true with enforcing your trademark rights. The law doesn’t require trademark owners to oppose every application for a potentially-conflicting trademark registration. It also doesn’t require you to sue every potential infringer. Oftentimes, you get to pick your battles, and you should do so carefully.
It usually comes down to whether you would get a good return on your investment. In other words, you should apply to register your name, logo, and/or tag line if it would likely be worth your while to do so. The corollary is that if you wouldn’t likely obtain a good return on your investment, you shouldn’t bother. The same is true with seeking to enforce your trademark rights. Now, it’s often not very expensive to do what’s needed to maximize one’s trademark rights, but owners should be strategic in allocating their resources.
Granted, if you’re on the receiving end of a cease-and-desist letter or trademark infringement lawsuit, your options are more limited. But the value of your trademark investment and likelihood of success in maintaining it — read: practical economics — should still drive the train.
Let the market be your guide. Whether you’re playing offense or defense, a trademark lawyer can help you decide what steps are likely worthwhile, and what steps you can skip. But in the end, it’s usually not complicated. It should be about getting your money’s worth — doing the things that provide good value, and forgoing the things that don’t.
Trademark owners, take note. If you file an application for federal trademark registration, you should keep an eye out for misleading mailings from unscrupulous vendors trying to sell you (or trick you into paying for) things you don’t need.
This is one reason the U.S. Patent and Trademark Office warns as follows:
“By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTO’s on-line databases and through internet search engines and other on-line databases.”
Heed this warning. Fraudsters troll the PTO’s public database and send applicants phony invoices and other official-looking mailings. Their names frequently mimic the PTO’s, and include words like “United States,” “U.S.,” “Trademark,” “Registration,” “Office,” and “Agency.” Ignore them. They are fraudulent. The senders count on a handful of trusting or careless recipients out of thousands to pay their “invoice.” Don’t be one of them.
All official mailings will come from the PTO in Alexandria, Virginia. Or, if your lawyer filed the application, official word will come solely from him or her. All official PTO emails will have .uspto.gov in the sender’s address.
There’s no way to get around providing your contact information when filing for federal trademark registration. That shouldn’t dissuade you from making a filing; just be smart when doing so. Thoroughly ignoring any unsolicited invoices you receive is the best way to take the profit motive out of these scams. You also can report them to the PTO at TMFeedback@uspto.gov.
A trademark registration can be a valuable asset.
This was borne out for an East Coast-based client I recently represented. It had a federal registration for its business name in connection with its business’ core offerings. It obtained the registration from the U.S. Patent and Trademark Office years before they came to me with their trademark infringement problem, so good for them for maximizing their rights in their mark.
Their efforts paid off. After they applied to register their mark, a Washington company started offering the same services in connection with a substantially identical name. The Washington company wrongly believed that because my client was located on the East Coast, there was neither harm nor foul in copying my client’s brand. The Washington company didn’t listen to reason, and the case ended up in court.
Fortunately, the court didn’t waste any time granting judgment for my client. It found that because my client had obtained a federal registration, it was presumed to be the exclusive, nationwide user of the mark in connection with the services listed on the registration. It entered a permanent injunction against the Washington company, the scope of which the parties expanded in settlement. This wouldn’t have happened if my client hadn’t registered its mark. Again, good for them!
This case shows the benefits of federal registration. A trademark owner can expand its localized rights by registering its mark. Doing so yields national rights against later adopters of marks that are likely to cause consumer confusion with the registered mark. If you’re a Seattle business owner and don’t care if someone in San Francisco, New York, or Miami adopts a trademark that is identical or close to yours in connection with similar goods or services, there’s no need to get a registration. But if that situation would bother you, your ticket to stopping it is getting a federal registration.
One of my local joints, The Publican, is now called the Burgundian Tavern.
A trademark problem. Apparently, they tussled with a Chicago restaurant of the same name soon after opening.
The Seattle owner called the whole thing “an unfortunate mess,” and a writer reported the establishment “had already spent more money on lawyers than made him comfortable.”
Two things come to mind. First, there’s seemingly little chance of confusion between a restaurant in Chicago and a restaurant in Seattle, even if they have the same name. And unless the Chicago restaurant has some sort of presence here, its trademark rights probably would be junior to the Seattle restaurant’s unless and until the Chicago restaurant started doing business here — notwithstanding its federal registration.
Second is the practical reality that fighting a trademark fight is a financial drain and big distraction for a new business. Rights aside, it’s just too big a pain for most new business owner to fight — even if he or she can win.
The take-away is that new trademark owners should do their homework. Hit Google and the U.S. Patent and Trademark Office’s database. Is anyone out there using your contemplated mark to sell anything that resembles what you intend to sell? Even if there are no identical hits, remember the standard for trademark infringement isn’t “identicality”; it’s “likelihood of confusion.” That means even similar marks paired with similar goods or services can get a new trademark owner in trouble. Since courts usually resolve conflicts between trademark owners by applying a simple rule called “the first to use wins,” later adopters usually lose these fights. In other words, they’re the ones that need to change their trademarks.
A little homework on the front end — before signs are ordered, advertising is purchased, and customers start to learn your name — can help a new business avoid trademark trouble down the road.