Written by AskTheLawyers.com™
Written by AskTheLawyers.com™
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Trademark law refers to the protections surrounding any company name, phrase, logo, or similarly identifying feature that serves to inform consumers about a company. Trademarking an identifying feature for a company can provide protection if another company should decide to recreate or steal that feature in an attempt to draw consumers their way; this violation of a trademark is referred to as trademark infringement.
Anyone who wants to trademark an identifying feature of their business can request to have a trademark registered, but they must first complete a detailed application and that application must be accepted by the United States Patent and Trademark Office (USPTO). Like other types of intellectual property law, trademark law is complex and can benefit from the help of an experienced trademark attorney. USPTO strongly encourages trademark applicants to hire an attorney with a specialization in trademark law to guide them through the process. It should be noted that typically after filling out a trademark application, if a trademark attorney was hired to help, USPTO will solely communicate with them.
Trademark Holders Have Certain Rights.
It is not legally required to register a trademark. However, doing so provides a variety of protections to those who hold a federally registered trademark.
Let’s go over some of the rights that are afforded to registered trademark holders according to USPTO:
- Notice to the public: Registered trademarks include a notice to the public of the registrant’s claim of ownership. This can prevent other companies from accidentally or intentionally infringing on the trademarked feature.
- Legal presumption of ownership: This refers to the immediate assumption that in any legal situation where ownership of the trademarked feature is in question, the officially registered trademark holder will retain ownership.
- Exclusive rights: This ensures that only the trademark holder has the right to recreate and distribute their trademarked feature.
There is an Application Process for Registering a Trademark.
The application process for registering a trademark can be complicated. The application will request a variety of answers to specific questions that will determine if the feature is eligible for a trademark, as well as the timeline that will apply to your situation. This is why USPTO recommends hiring a trademark attorney to file on your behalf. Steps that go into registering a trademark include the following:
- Make sure you have selected a strong mark. Research what makes a strong trademark, as well as what elements a feature needs to have for it qualify for federal registration and legal protection.
- Identify your goods and/or services to which the mark will apply. A successful application must identify in specific detail which goods and/or services the trademark will apply to.
- Search trademarks in the USPTO database. This is essential to making sure the trademark holder does not waste time and money on an application that is going to be rejected. Searching existing trademarks can be tricky and can benefit enormously from the help of a trademark attorney who will know where and how to look for similar trademarks.
- Identify the basis for filing. This simply refers to whether the trademark holder is already using the mark or intends to use the mark in future commerce.
- Prepare to pay filing fees. The specific fees an applicant is required to pay will vary from case to case depending on the situation. This fee is not generally refundable. Make sure you understand the applicable fees before submitting an application.
- Submit the application. This is where it’s a good idea to hire a trademark attorney to look over your application if you have not already done so. Letting an expert assess your application can result in necessary changes being made sooner rather than later, lowering the possibility of the application being rejected.
Specific Damages Can be Claimed in a Trademark Infringement Lawsuit.
It can be hard to recoup monetary damages from a trademark infringement lawsuit. In most cases the purpose of the lawsuit is to force the other party to stop using the trademarked feature. However, in some scenarios the trademark holder could seek compensable damages, primarily including:
- Reasonably royalties: This refers to the market value the infringer would have had to pay for the license to use that trademark had they gone through the proper channels. This value can vary greatly depending on the trademark itself as well as to what degree and in what way the trademark was used.
- Lost profits: This refers to any profits that the trademark holder or their attorney can prove was lost due to the infringement.
It should be noted that USPTO does not monitor proper use of trademarked features; if you believe another company might be infringing on your trademark you are responsible for pursuing legal recourse of your own volition. To learn more about trademark law, seek help registering a trademark, or if you are considering filing a trademark infringement case, seek legal counsel.