A trademark can be a word, phrase, symbol, scent, color, and/or design. You may be able to register a trademark for your business name, for your logo, for your product names, or even for your product packaging. Trademarks serve as source identifiers because they distinguish the source of the goods and services of one party from those of another.
Once you have used your trademark, you have certain common law rights and can indicate your rights to your unregistered mark through use of the “TM” symbol. However, you will want to register your trademark with the United States Patent and Trademark Office (USPTO), as registration confers certain benefits. You can register your trademark once you have used it in interstate commerce. The USPTO also allows you to claim a mark that you have not yet used through an intent to use application.
Once a trademark is used in interstate commerce, it can be registered with the United States Patent and Trademark Office. Once you receive your certificate of registration for your federal trademark, you may use the ® trademark symbol on your mark. Registered trademarks provide the trademark owner with the exclusive right to use that mark. If someone else adopts a confusingly similar mark that may lead to confusion with your trademark, you can prevent them from using that mark.
There are forty five trademark classes in which you can register your trademark. You can register in multiple classes for either goods or services or for both. Trademark classes 1 to 34 cover goods, while classes 35 to 45 cover services. The USPTO has requirements for what kinds of marks may be registered and not all trademarks are registrable.
In the United States, trademarks are protected by common law, state law, and federal law. At the federal level, trademarks may be registered with the United States Patent and Trademark Office. Registering your trademark is an investment into your business, as the associated goodwill that comes with your trademark is a valuable business asset that can appreciate in value over time.
Federal registration of a trademark on the Principal Register provides many benefits to trademark owners, including the right to use the ® registered trademark symbol on your goods or services. Your registration can prevent others from adopting confusingly similar trademarks, as the United States Patent and Trademark Office has a duty to deny registration to a trademark that may cause consumer confusion. A federal trademark registration also serves as prima facie proof of the validity of your trademark and it provides notice to the public of your trademark ownership. Owning a federal trademark also permits you the right to sue in federal court if it becomes necessary to enforce your trademark rights. You may also recover monetary damages, including the infringer’s profits and attorney’s fees incurred during the lawsuit.
The trademark office allows you to file for your trademark if you are actually using the mark in commerce or if you intend to use the mark. An intent to use application is used where you have a bona fide intent to actually begin using that mark in commerce. If you file a trademark intent to use application, you will need to file a subsequent Statement of Use to certify that you have used the mark in interstate commerce. Use of a trademark in interstate commerce can be establish through a date of first use of the mark anywhere and a date of first use of the mark in commerce.
When submitting your trademark registration, you must submit a specimen that shows how the trademark is actually used in commerce. For a service trademark, this may be a screenshot of your website which offers the services with the trademark displayed. For goods, this may consist of product packaging or a hang tag. The specific specimen type will depend on the good or service which you are seeking trademark registration for.
Once your application is submitted, it will be assigned to a trademark examining attorney. The trademark examining attorney will review your application to see if there are any issues with allowing your trademark to proceed to registration. If the trademark examining attorney discovers any issues, he or she will issue an Office Action. An Office Action will identify the issues with the registration and may include suggestions to the Applicant on how to cure these issues.
A trademark license is an agreement between the owner of a trademark and a third party in which the trademark owner agrees to permit the third party to use the trademark in connection with the third party’s good and/or services. For example, many universities license their collegiate football trademarks to third party manufacturers of goods, such a t-shirts, hats, and other apparel.
Although a trademark license may be granted orally, a written agreement reflecting the trademark license is best practice. A written agreement will outline the terms and conditions, including conditions for quality control for use of the trademark on the third party’s goods or services. Quality control is especially important for the trademark owner. It permits the owner the right to monitor the usage of the trademark and to ensure that the usage is in accordance with the standards and terms of the trademark license agreement.
Trademark licenses are generally issued subject to a reasonable royalty rate payable to the owner of the trademark. This permits the trademark owner the right to recover future income from the third party’s usage of the trademark. Once the trademark license has been negotiated and executed, it can be recorded in the United States Patent and Trademark Office. Recordation provides notice to other parties of the licensing agreement.
If the owner of a trademark wants to sell their trademark outright, then a trademark assignment must be executed. An assignment is a sale of the ownership interest in the trademark and the previous owner retains no rights the trademark.
When the owner of a trademark believes that someone has infringed their trademark and that consumer confusion as to the source of origin for the goods and services is likely, they often contact a trademark lawyer. The trademark lawyer will generally issue a trademark cease and desist demand letter to alert the infringer and to demand that the infringer immediately cease usage of the trademark.
Do you need a trademark cease and desist letter?
Our trademark lawyers routinely draft and issue trademark cease and desist letters to infringers. Generally, these letters will demand that the infringing party cease and desist all use of your trademark. The letter may also request monetary damages or requests for further information, such as sales figures. Trademark cease and desist demand letters usually include a one to two week time period for the accused infringer to respond. If you are the owner of a registered trademark and you believe that someone is infringing your trademark, call the law office of Ritter Spencer PLLC or reach us via our Contact Us page.
Did you receive a trademark cease and desist letter?
If you are the recipient of a trademark cease and desist letter, you may need to retain a trademark lawyer. If you do not respond to a trademark cease and demand within the time period stated in your letter, the trademark owner may choose to file a federal trademark infringement lawsuit against you. The trademark owner may be able to recover their attorneys’ fees incurred in the lawsuit.
Is someone infringing your trademark?
If someone is using your trademark without your authorization, you may have a cause of action for trademark infringement. To succeed on your trademark infringement claim, you must show ownership of a valid trademark and that the defendant’s use of your trademark to identify its own goods and services is likely to cause consumer confusion. Here in the Fifth Circuit, the courts will look to the following factors to determine if consumer confusion is likely: (1) strength of the plaintiff’s mark; (2) similarity of design between the marks; (3) similarity of the products; (4) identity of retail outlets and purchasers; (5) similarity of advertising media used; (6) the defendant’s intent; (7) actual confusion; and (8) degree of care exercised by potential purchasers.
If you have not registered your trademark with the United States Patent and Trademark Office, you may hold common law rights to your trademark. Generally, common law trademarks may be enforced through federal or state law unfair competition claims.
If you have registered your trademark with the United States Patent and Trademark Office, you may file a trademark infringement claim in federal court. However, before taking that step, it is often prudent to send a cease and desist letter to the party which you believe is infringing. Often, a trademark cease and desist letter sent by a trademark lawyer will allow the matter to be resolved without litigation.
Remedies for trademark infringement include injunctions against further infringement, monetary damages and recovery of attorney’s fees for a successful trademark plaintiff. Generally, the infringer’s profits, lost profits, or reasonable royalties can be recovered from the defendant for trademark infringement.
If you believe that someone is infringing your trademark, please contact our trademark lawyers today.
If you have received a trademark cease and desist or if you have been served with a federal Complaint for trademark infringement, it is important to retain a trademark lawyer for your defense. We can assist with drafting a well-articulated response to the letter, contacting opposing counsel who issued the letter, and negotiating resolution on your behalf if necessary. Sometimes, cease and desist letters are issued which should not have been issued. For example, some aggressive trademark owners will send a cease and desist regardless of whether there is a likelihood of consumer confusion. Where this is the case, our trademark lawyers will assist in defending you against the misplaced allegations.
If you have been accused of trademark infringement, our trademark lawyers can help. Ritter Spencer PLLC offers cost-effective and efficient litigation solutions. Please contact us today to discuss your defense.