How Every Business Should Protect Its Trademarks

Identity theft is something we all hope never happens to us.  The recommended steps to prevent identity theft include carefully protecting financial documents, periodic monitoring of our credit reports, never giving out our social security number without good reason, etc.  Trademarks should also be carefully guarded, because they are your business identity.

The first step to guarding trademarks is to determine what are your trademarks.  Any business name, product name, service name or certification name is a trademark.  For example, a business named Harrison Manufacturing (“Harrison”) probably has a service mark for that name.  If Harrison is commonly referred to as “Harrison,” that may also be a service mark.  If Harrison sells plastic bottles under the name “PlastBot,” and plastic utensils under the name “PlastUten,” these are trademarks too.  If Harrison provides a service of periodically refilling orders automatically, and this service is termed “AutoPlastRefill,” then that is another mark.  Review your business marketing materials such as web site, brochures, videos, point of sale displays, product names, service names, menus, signs, business cards, and information sheets.  Aside from the obvious trademarks that you know about, are there any words, slogans, logos, packaging, or items, even sounds (e.g., the NBC 3 tone chime), colors (e.g., pink for insulation), scents, product shape and/or other aesthetic features that are unique to your business?  If so, it may be desirable to protect such as trademarks.

After identifying trademarks, make sure to use trademarks properly.  Ideally, trademarks should always be in a different font or otherwise distinguished from the rest of the text, and the TM should appear at the top right of the mark, e.g., PlastUten™.  The circle R logo ® should only be used on federally registered marks.  A legal nuance is that trademarks are adjectives, not nouns.  Accordingly, marketing materials, web sites and all other documents should refer to PlastUten™ plastic utensils, such as “We ship PlastUten™ plastic utensils anywhere in the world,” rather than statements such as “We ship PlastUtens anywhere in the world.”  A simple rule to follow is that the sentence should make sense even if the trademark is left out.

Next, it should be determined whether these marks merit trademark applications at the federal or state level.  Generally, a search should be conducted to help make this decision.  One can search federal applications and registrations on the U.S. Patent & Trademark Office (PTO) web site at www.uspto.gov or by going to the PTO main page for trademarks at www.uspto.gov/main/trademarks.htm, and following the links to the trademark (TESS) search page.  Further searching can be done on the internet, and/or by contacting patent and trademark counsel.  If the mark is used in “interstate commerce,” i.e., goods are shipped outside the company’s home state, or services are performed for customers located outside the home state, a federal application is suggested.  Interstate commerce can take place in other ways too.  If there is no interstate activity, a California trademark application may be appropriate.

Applications provide strong evidence of rights throughout the nation (for federal applications) or throughout California (for California applications).  Once registered, there is normally a presumption of trademark validity and the rights extend throughout the area covered by the registration.  The presumption of validity and the geographic extension of rights greatly simplify proof in the event of a lawsuit.  For example, if you own a restaurant that does business in Westwood, a California registration provides rights throughout California.  Without a registration, if a competitor starts a restaurant business in downtown Los Angeles with the same name, you will need to prove that you have customers in downtown in order to stop the competitor.  Moreover, additional advantages of registration exist such as a greater likelihood of obtaining monetary damages and/or attorney’s fees in the event of litigation, the possibility of seizure of counterfeit goods, and protection against internet domain name pirates.

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