While a significant portion of our work is for sophisticated clients with a portfolio of patents and trademarks, we do from time to time get questions from potential clients or referring attorneys who have never gone through the trademark process before. If you fit that description, this one's for you.
The value of well-recognized trademarks is appreciated by virtually every senior marketing and sale executive. However, protection and enforcement of rights under such trademarks are not so appreciated. The reason for this is simple. The executive wants to make his products as widely recognized as possible -- even household words -- to maximize sales. On the other hand, if a mark is not used properly or becomes so widely known as to be generic, the trademark owner is unable to enforce his rights against infringers. Therefore, a balance must be struck between one's marketing and legal interests.
Trademark registration is an important facet of protecting trademarks. While not required, registration of a trademark -- even one that has been in use for a long time (it's not too late!) -- provides important additional rights and options for protecting and enforcing trademark rights, such as presumptions of validity and incontestability.
Filing an application for registration of a trademark in the United States not only can establish rights in the U.S., it also creates an important option under more than one international treaty to file an application for registration of the mark in other countries.
An application for trademark registration includes a rendering of the mark itself (design or typewritten), a description of the goods or services to which the mark refers, the name of the owner, and a fee. An examining authority then reviews the application and decides whether it can be accepted or negotiates with the applicant regarding the application.
If the mark is accepted by the examining authority, the mark is published to notify anyone who might wish to oppose the registration. If there is no opposition within the allotted time frame, the registration issues in due course.
Once the application for registration of the mark is filed, it is said to be "prosecuted" by the applicant or his agent to issue the registration. Thereafter, the registration has a finite but renewable life -- usually ten years long. If the mark lives beyond the initial registration life, it may be renewed upon another application, assuming the mark has been used and the registration maintained in accordance with local law. Thus, a trademark registration involves continuing maintenance and upkeep in addition to policing and enforcement.
Policing a trademark is as much a part of its protection as registration. Practically, it means not letting others use the mark for any unauthorized purpose. Policing involves watching the marketplace in which the products covered by the mark of interest are offered and sold. "Watch services" are available for monitoring applications to register the same or similar marks in the U.S. Trademark Office and provide early warning of potential infringers. Trademark owners must also be vigilant for generic uses of their mark. Trade journals and other media writers may begin using a trademark as jargon to describe facets of industries, products, or services without realizing the damage they may be doing to a trademark. The Internet poses new challenges in the policing arena.
Policing usually entails writing at least one letter to the offending party and settling the matter on a prudent, hopefully amicable business basis. Policing is often the precursor of enforcing trademark rights by litigation or other means.
Enforcing trademark rights means invoking formal procedures to stop offending infringement and infringement-like conduct. In trademark infringement and unfair competition litigation, the owner may seek a permanent injunction and damages. Other formal procedures include filing opposition or cancellation proceedings in the Trademark Office in opposition to the offending registration.
With registration and policing, enforcement of trademarks becomes more effective. While registration of a trademark may not be inexpensive, it is an essential, cost-effective tool for maintaining the balance between marketing and sales of products and the enforceability of trademark rights.