Intellectual property is a broad categorical description for intangible assets owned and legally protected by a company or individual from outside use or implementation without consent. Subsequently, there are categories of how these assets are protected by law, one of which is known as trademarks. In this blog post, I will break down what a trademark is, what is covered under trademark law, how you can obtain a trademark for your business, three reasons why trademarks are important to your company, and remedies when other businesses or entities have infringed on your mark.
WHAT IS A TRADEMARK?
A trademark is a category of intellectual property comprising distinct designs, marks, expressions, logos, names, and signs that identify and distinguish a product, company, or service from others. The goal of a trademark is to protect the intellectual property of a person or a business, to stop confusion between products, to reduce unfair competition, and to give a corporation a reason to invest in its marks. A trademark owner can also be a company, individual, or entity. Anyone can become a trademark owner as long as the company or individual meets the requirements of having a trademark for the product, service, or company.
WHAT IS COVERED UNDER TRADEMARK LAW?
Amongst other laws, trademarks are protected under The Trademark Act of 1946 and 35 U.S.C. §1. For a trademark to be protected, it must be used in commerce, distinctive, and useful. A distinctive mark is a mark that is arbitrary, fanciful, or suggestive. A proposed mark cannot be descriptive or generic. However, a proposed mark can be one that may acquire secondary distinctiveness, which is the idea that if you use a descriptive mark to describe your services, over time, it will acquire distinctiveness.
Items that can be trademarked include but are not limited to:
- Product names and nicknames (for example, both Coca-Cola and Coke are marked)
- Logos
- Sounds (like the distinct N.B.C. chimes)
- Business names
- Slogans (like Nike’s “Just Do It”)
- Color combinations or schemes (like the brown of a U.P.S. truck)
- Smells (Hasbro received a Play-Doh scent trademark in 2018)
STEPS TO OBTAIN A TRADEMARK FOR YOUR BUSINESS.
Soliciting the help of a licensed attorney in obtaining a trademark is the easiest way to acquire a mark. However, an individual or business can also register for a trademark via the U.S Patent and Trademark Office using the following steps:
- After selecting a potential mark, search the USPTO database to determine if similar words, designs, goods, or services you seek to a trademark are already in use.
- Choose your mark format, either a standard character mark, a design mark, or a sound mark.
- Specify the exact goods and services that the trademark will apply to and the corresponding trademark class using the list available on the ID Master List.
- Select what your filing basis will be and pay associated fees.
- Submit a trademark application.
- Lastly, wait for the approval and complete the final paperwork and review.
THREE REASONS WHY OBTAINING A TRADEMARK IS VITAL FOR YOUR BUSINESS.
- Provides legal protection for the brand: having a trademark grants the business or individual a monopolized right to solely use the mark for the product or service, distinguishing it from similar brands.
- Helps guard against counterfeiting and fraud: a trademark conveys the product or service quality of a product; when another company creates the same product, a trademark will differentiate the quality and protect against other companies passing your product or service as theirs.
- Financial benefits: trademarks add value and recognition to a company. Therefore, a company with well-established trademarks and brands in its portfolio enjoys a good market reputation.
REMEDIES TO TRADEMARK INFRINGEMENT.
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with products or services in a manner that is likely to cause confusion, deception, or mistake about the source of the products or services.
As a trademark owner who believes its mark is being infringed on, you may file a civil action in either state or federal court for trademark infringement. If the trademark owner can prove infringement, available remedies may include the following:
- A court order (injunction) that the defendant stops using the accused mark.
- An order requiring the destruction or forfeiture of infringing articles.
- Monetary relief, including the defendant’s profits, any damages sustained by the plaintiff, and the costs of the action.
- An order that the defendant, in some instances, pay the plaintiffs’ attorneys’ fees.
Sources
What Is A Trademark? Everything You Need To Know – Forbes Advisor
Importance of Trademark – Why Trademarks are Important? | IPTSE