Before investing substantial time or money into a business it is a good idea to get some advice from a trademark lawyer. By ensuring that you can protect the name you’re planning to build your business or product under you can ensure that you do not have a competitor confusing your customers. You can also ensure that you do not infringe upon someone else’s trademark and confuse your customers as well as theirs.
A key element of marketing your business will be getting your customers to identify you as the source of the product or service that they are seeking to purchase. This requires that you have a distinct indicator – a trademark. Sometimes trademarks are used to define service in which case, they are commonly called servicemarks. Both of these designations fall under the Lanham Act protections.
Enforcement of trademark rights hinges on likelihood of confusion tests set up by courts. While certain protections are granted under common law to trademark holders from the moment of use in commerce, these protections are considerably weaker than those granted to a trademark owner who seeks and receives a properly registered trademark from the United States Patent and Trademark Office (USPTO).
A registration of your trademark provides a wide variety of rights:
- The right to use the ® symbol: The ® symbol denotes to viewers that your trademark is registered. This right is only conveyed by a properly filed and issued registration and constitutes notice to the viewer that this trademark is protected. It is important that others be on notice that your trademark is protected and it may cause someone who is considering whether or not to set up a competing brand or product name to rename their product and steer clear of your rights. Having your rights protected by an experienced trademark attorney will be an important component of protecting your business and the investment therein. Use of the ® symbol without a proper registration may be considered fraudulent.
- Exclusive Rights to Use: A properly used and registered federal trademark can provide the trademark owner with the right to exclusive use nationwide. This ensures that your trademark attorney can seek to stop any other business or person from offering the same or similar goods or services under your trademark or anything confusingly similar.
- Priority Date of first use: The filing date of a Trademark Application with the USPTO can provide the trademark owner with a priority date of first use. Because trademark rights arise from use rather than registration, this can help ensure that there can be no successful challenge of the date of first use where that date is also the registration date. Often Trademark Applications will list a date of first use that is earlier than the date of application. This date must be discussed at length with your trademark attorney.
- Allows Trademark Owner to seek treble damages in some circumstances: If you need to enforce your trademark rights in court, treble (triple) damages are available in certain instances. In extraordinary cases you may also be able to recover your attorneys fees from the infringing party.
- Provides for statutory damages: Statutory damages are available to the owner of a registered trademark if a third party is engaged in counterfeiting goods or services. These damages where available, can range from $1,000 to $2,000,000 per counterfeit mark and type of good sold, distributed or offered for sale.
- National Constructive Notice: Once a Trademark Application is approved for publication, it is published in the US Trademark Official Gazette (TMOG). This publication services as official notice that your mark is being registered and begins an opposition period during which anyone who believes their trademark or business may be harmed or infringed by your registration will have an opportunity to challenge and object to your registration. These proceedings before the TTAB (Trademark Trial and Appeals Board) operate much like any other court proceeding and require proper responses to protect your trademark rights. Once your mark makes it past the opposition phase and is eventually issued a full Registered Trademark status by the USPTO there is a presumption of law that anyone who begins to use the same mark or confusingly similar mark had legal notice that you were already using this mark. This can be a valuable tool in stopping others from copying your business and confusing your clients to the extent that your trademark rights are being infringed by someone offering a similar product or service.
- Grants right to register trademark with U.S. Customs Service to permit them to block or seize counterfeit goods: The United States Customs service maintains a registry of Registered Trademarks which allows them to stop imported counterfeit goods and seize them at the border checkpoints. If you have a product and suffer from imported counterfeits, this can offer a substantial means of eliminating the counterfeit goods from the marketplace.
- US Registration provides a basis for foreign trademark registration: Foreign trademark applications can be filed based upon your US Trademark under the Madrid Protocol and others. If you plan to do business using your trademark overseas, it may be advisable to seek these registrations.
Do I need a lawyer to file a trademark?
You could file your trademark without a trademark attorney. However, considering the relatively low cost of having a trademark lawyer draft and file your trademark application, you should not take the considerable risks involved with an improper application. We offer flat rates that are very reasonable — Contact Us. I would never advise any of my friends to file their own trademark application without an attorney. Starting a new business or launching a new product can mean investing tens of thousands of dollars in start-up and marketing expenses. Building this all on an improperly protected trademark would be a huge waste.
While there are many companies out there that will offer you a low, flat rate to fill out a trademark application for you, this is often a bad idea. Filing a trademark is not a simple procedure of filling out a form. Mistakes during this process can invalidate the trademark years down the road when it is challenged when you go to enforce your rights. An improperly filed trademark is often just as bad as no trademark at all. There are many important elements that you can discuss with a trademark lawyer to ensure that your valuable mark receives the protect you’re seeking. Don’t waste your money on a non-lawyer service like LegalZoom or RocketLawyer. These services may be appropriate for some types of filings, but in my opinion they are a terrible idea for trademark registrations which can only be done well by someone who has years of training and experience with trademark law.