Trademark Law: You Snooze You May Lose

2013_03_23__5016-300x200Whether you’re starting a new business, launching a new product or service or just haven’t gotten around to getting trademark protection for your logo, the names of your company or what you provide your customers, acting sooner is better than acting later. The more time passes the greater the chances another party may be able to trademark the same or similar words.

Trademarks are words, symbols or phrases that identify you as the seller of goods or services or the manufacturer of certain products. Trademarks distinguish them from other goods or services.

Perform a clearance search.

You may have a name for your company, service or product. Find out if it’s being used by others elsewhere. It’s better to learn now that this is an issue, not during the trademark process. You can search the internet and on the U.S. Patent and Trademark Office’s (USPTO) website. If you find another party has trademarked your word(s) you may be able to purchase from them the trademark rights or your name, good or service may be different enough to allow both trademarks. The issue would be whether the public would confuse one party’s trademarked company name, good or service for another.

Is the website domain name you seek already taken?

Ideally your trademarked brand should also be your website address (or as close to it as possible) to get more website traffic. Often a company has purchased hundreds, if not thousands, of domain names in order to sell them not use them. Unless you can show the name was purchased in bad faith, you’ll have to deal with the domain’s owner.

You could come up with a similar domain name that hasn’t been purchased yet or approach the owner directly, or through a broker, to buy the domain. You may want to do this before trademarking anything. The owner may search the USPTO website and if you’ve already trademarked your desired domain name, use this as leverage to increase the price.

File a trademark application with the USPTO.

Though just using that name with your business gives you some common law (court made) rights what’s even better is protection by federal law. You need to file this application and get it approved for this to happen. The benefits of a trademark are,
• Nationwide priority in its use based on your filing date,
• A statutory presumption your mark is valid,
• A statutory presumption you own the mark,
• The right to use the registered trademark symbol (®), and
• You may have the U.S. Customs Service prevent the importation of goods that infringe on your registered trademark.

Foreign protection.

Would it be a good idea to prevent the use of your trademarked word(s) or logo? Are you considering an expansion overseas? If your product or service is provided over the internet, might a foreign company try to steal your potential customers by using your name or logo? The Paris Convention, an international trademark agreement, gives you six months from your U.S. filing to file for protection in member countries.

If you have any questions about trademarks, how to register for one or how to protect your trademarks from infringement by others, contact our office so we can talk about what’s going on, how the law may apply, your best options and how we can help.