Whether you sell goods and/or services, you want to protect your business brand by preventing others from misusing it to hurt your image. In many cases, a trademark lawyer can help you get maximum legal protection for your brand.
What Is A Trademark?
Your trade mark is your brand name for one or more goods that you sell. You can express this brand in multiple ways, including a name, symbol, words, device, or a combination of these with the purpose of identifying your good(s) separately from competitors.
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If you have not registered your trademark with the U.S. Patent & Trademark Office (USPTO), you may assert your unregistered mark as your brand by adding a superscripted “TM” to it.
However, to reduce the risk of getting into legal hot water, it’s a good idea to have trademark attorney review your unregistered mark and have a search performed to see if there are competing claims to the mark or one similar to it.
What Is A Service Mark?
Just as a trademark is a brand for your good(s), a service mark is a brand for one or more services that you sell. If you don’t have a registered service mark with the USPTO, you may assert your unregistered service mark by adding a superscripted “SM” to it.
However, just like an unregistered trademark, you’ll probably want to have an experienced trademark attorney review your unregistered service mark to see if there are legal risks, including potential competing claims to the mark by others.
If your trademark or service mark qualifies under federal law, you can apply to register it with the U.S. Patent & Trademark Office (USPTO) for extra legal protection under U.S. law. For a registered mark, you add a superscripted “R” inside of a circle.
A registered mark receives special protections under U.S. federal law that are unavailable to unregistered marks. For example, a registered mark creates a legal presumption nationwide that you own the mark with exclusive right to use it for the goods and/or services for which you registered it with the USPTO.
If you are building a brand for products and/or services, this is why it typically makes sense to take advantage of USPTO registration for your mark if it is eligible.
Most mark owners retain an experienced trademark lawyer to handle the application process.
This typically includes preliminary work to determine whether you should apply for registration, such as a comprehensive search of federal, state and common law marks that may conflict with the mark you want to register. This search is important because the federal database of registered marks, the USPTO Trademark Electronic Search System (TESS), does not include state and common law unregistered marks that may conflict with the mark you want to register.
In addition, your trademark attorney will use the USPTO Acceptable Identification of Goods and Services Manual to properly classify and describe the goods and/or services for which you’re seeking registration. This is very important because you want the registration to protect your brand but not be overbroad so that it inaccurately covers goods or services unrelated to what your brand. For example, if your mark is the unique name of your restaurant chain, the description shouldn’t be so broad that it covers children’s swimwear you don’t sell in your restaurants.
The application itself will be reviewed by an attorney who works as a trademark examiner for the USPTO. Although this attorney may answer some procedural questions if you file the application yourself, as a USPTO employee the examiner will not give you legal advice.
Trademark Registration Renewal and Abandonment
How do you maintain the federal registration for your mark?
Generally, after between 5 and 6 years after your registration date, you’ll need to file a maintenance document with the USPTO (Declaration of Continued Use or Excusable Nonuse).
In addition, every 10 years after your registration date, you’ll want to renew your registration by filing a maintenance document with the USPTO (Combined Declaration of Continued Use and Application for Renewal).
An experienced trademark lawyer can handle these maintenance documents for you.
What happens if you fail to file to timely file these documents?
The USPTO will deem the mark to have been abandoned (cancelled or expired) and you will lose all of the advantages of having a registered mark. However, you may still have lesser legal rights for it as an unregistered mark.
If someone unlawfully uses your mark (e.g. counterfeit goods), you may have a claim for infringement against them.
Your available remedies will vary depending upon a variety of factors, including whether your mark is registered or unregistered, the nature of the infringement (how the mark was unlawfully used), and applicable law.
If your mark is registered with the USPTO, you may be entitled to significant statutory damages and an award of attorney’s fees under federal law. For an unregistered mark, you are likely to collect less to compensate you for the infringement.
You may choose to license your mark for others to use. This is often done in exchange for licensing fees.
It’s important to use a qualified trademark lawyer to prepare your licensing agreements so that they protect your legal rights and don’t conflict with each other. Otherwise, the benefits of licensing are outweighed by the lawsuits filed against you by angry licensees when they discover you’ve sold them conflicting rights.
On the other hand, you may wish to license a mark owned by another business or individual. If the mark’s owner is willing to license it to you, your attorney can protect you by ensuring the agreement protects your rights as a licensee.
Where Do You Find A Good Trademark Lawyer?
An experienced Registered Patent Attorney can help you with your trademarks and service marks, including federal registration with the USPTO if they qualify.
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Good Internet transactional attorneys can also help you with trademark issues, such as preparing licensing agreements that boost the income you receive from your marks while protecting your intellectual property.