US Trademark laws provide two kinds of trademark protection. Common law protection are acquired automatically by a business on normal course of commerce over a period of time and the other one on federal registration in USPTO. A trademark registered in the US PatentandTrademark Office has a higher level of protection and enforceability than an unregistered trademark. It also protects a business’ brand value or commercial identity by preventing competitors from using a name or logo that is confusingly similar to pre-existing trademarks. Trademarks help brands to develop and distinguish the goods and services from those of its competitors.
A registered trademark gives you the nationwide exclusive right in the specific category of goods and services. The proprietor of a trademark is presumed to be the true owner and can easily approach the federal courts in case of any infringement. Registration provides ample other benefits such as levying of triple damages or criminal penalties for some cases of infringement and provides no claim on defence to the infringers that they were not aware of the trademark. Additionally, a registered trademark becomes ‘Incontestable’ after five years of registration.
There are several shortcomings of an unregistered trademarks which includes the loss of potential market to trademark infringers. 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. The court found that the respondent was an innocent infringer and in case of innocent infringer, the proprietor of the mark is not allowed to claim any damages sustained by him. But the innocent infringer plea is not applicable in case a mark is registered. Hence, a registered mark always has a strong upper hand over unregistered in infringement claims.
The trademark act makes any counterfeit manufacturers or any trademark deceptively or confusingly similar to pre-existing marks, liable under the act. But, it was held not to be applicable in this case as the plaintiff’s trademark was not registered.
Non-registration of trademarks lays open numerous other threats of loss to businesses all across the world including infringement in online marketing and search engines. The growth of newer technologies has propelled newer forms of advertising and marketing tools and so has the law of trademark forayed into newer dimensions. Google Index and Adwords are two such online tools offering wide range of advertising through-out the globe.
The advertisers purchasing keywords from Google may use such keywords to gain advantageover the trademark of other proprietors. For example, you have a trademark registered with your company’s name but when you search it online, the initial listings show your competitor company’s website and details. This practice of trademark infringement has not been regulated worldwide though it has gained much attention. The legalities of it varies from country to country.
In United States, Google has the policy of restricting Adwords but not Keywords in the index. If a registered trademark is infringed in any of the Google Ads, on receiving a complaint, Google will investigate and restrict the use which is unlikely in case of keywords or search terms in the index. In common law, it has been observed by courts that the reasoning behind a trademark holds true to such cases as well. The court ruled in a case that if a reasonably well informed internet user is not able to distinguish between the Ads of the origin company and the competitor, then infringement may occur.
Moreover, trademark registration process in United States in quite dexterous and therefore it is advised to seek professional help, even by the USPTO. An attorney will not only lessen the legal proceedings which follows the registration process but would save you from the potential pitfalls before, during and after the application process. Despite the availability of various search engines, a hired attorney would help you in comprehensive research and future costly legal problems and not to forget, he would eventually help you in enforcing and policing infringement or any other legal battles.
Contact our IP attorney in Washington, DC to learn more. www.ilexlaw.com