A trademark is a brand name through which you can distinguish your product or services in the marketplace from others. A trademark is generally a word, phrase, symbol, shape, colours, logo, design or a combination thereof. A proprietor may apply for trademark registration under Chapter 22 of the U.S. code Title 15. A trademark must be distinctive than descriptive and is granted for 10 years which can be renewed for a lifetime (by filing renewals every ten years) unlike patents. There are various types of trademarks such as Service marks, Collective marks, Certification marks used for varied purposes depending on the nature of goods and services.
Although registration of a mark is not mandatory and can be acquired through common law use, most of the successful companies believe in the importance of protecting their rights through registration. Some Companies like Coca-Cola have intangible rights valued worth more than the net asset of the company. Trademark Registration has several advantages including notice to the public of the registrant’s rightful ownership of the trademark, exclusive right of using the mark to prevent others from marketing under confusingly similar mark, legal presumption of ownership worldwide and to generate income from licensing. A registration gives you the statutory monopoly and you can simply sell off a mark to raise equity and investment for your business.
Moreover, a registered trademark becomes a valuable business asset which works as a marketing tool and helps in building a brand image. A trademark registration varies on the basis of the use. If the use of the mark is restricted to state level only, ‘State registration’ can be obtained by filing an application with the Secretary of state of the relevant state. If the mark is used in interstate commerce, it requires a ‘Federal registration’ which are more potent.State registration is relatively quick and inexpensive whereas, it is widely suggested to opt for a federal registration under USPTO as it provides substantial rights applicable throughout United States. A state registration doesn’t give you any additional rights over common law as you still cannot use an“R” symbol to notify your registered trademark as in the case of federal registration.
An unregistered trademark lays open the risk of your trademark being infringed without you having the legal position to claim damages or recover your losses. In cases where you don’t have a registered trademark and your mark is infringed, it impedes your locus standi to approach the court and the disputes seldom reach the court. A very identical set of facts were seen in the case of General Electric Company and Carboloy, Inc., v. Robert Speicher and Speicher, Inc., [877 F.2d 531 (7th Cir. 1989)], where the defendant company sold products marked similar to plaintiff’s product. A distributor for car company Chrysler asked the plaintiff to design a new technology of parts for the car company. The plaintiff came up with Carboloy 570 models with a unique mark on it but due to a disagreement between Chrysler and GE, the order was replaced with fresh orders. The defendant in terms with the distributor started supplying 570 marked designs for which the plaintiff sued. However, GE 570 was not a registered mark though commonly used. The court ordered the defendant to stop the counterfeit manufactures immediately but denied any damages to be awarded to the plaintiff as they did not have a registered trademark.
It is therefore ideal to have a registration which is substantially cheaper when compared to the losses suffered from infringement. Generally, most applicants hire an IP law attorney or a professional who expertizes in trademark matters to represent them in process of application and provides legal advice. There are a number of trademark statutes and rules that has to be complied to get the mark registered. A practicing professional has the acumen of identifying the exact class of services under which your mark falls, boost the scope of your trademark rights and advise you on the best way to protect your rights. Application for a trademark at USPTO involves a complex process and with a professional help, your chances of success is high.
Please contact our IP attornyes in Washington, DC to learn more!