A trademark is the most valuable asset owned by many businesses. The design, features, source code, or formulation of a product or service may change regularly and even predictably. Without a concise representation of the source, history or reputation of that product or service, such changes would make it immeasurably difficult, if not impossible, for a business to maintain demand. Businesses with particularly successful products or services spend considerable amounts of time, effort and money establishing and protecting their associated trademarks, and for good reason. Business owners who fail to pay sufficient attention to the protection of their companies’ marks face a number of what should be unacceptable risks, including the inability to register or use those marks at a future date, the dilution of the market’s recognition of their products or services, and, in some cases, legal fees and penalties arising from trademark claims made against them by other businesses. It is therefore important for all business owners to have an understanding of several basic principles of trademark law, including registration with the U.S. Patent & Trademark Office (USPTO), what constitutes improper use, and what remedies are available for infringement.
A trademark, or “mark,” is any word, phrase or symbol used by a business to let potential customers know who makes a certain product or who offers a certain service. (There is an increasingly archaic distinction made for marks that specifically designate services rather than products. Such marks are often labeled “service marks,” but this term is less frequently used today, and there is no meaningful distinction in the U.S. between the law’s treatment of marks for products and marks for services.)
In the U.S., a business may register its lawfully owned or used marks by submitting an application to the USPTO. Registration is not free: there is an application fee, and many businesses would benefit from the services of a knowledgeable trademark attorney in securing the registration and monitoring the use of any registered marks. In addition, in order for the registration to remain valid, a mark’s owner must file an affidavit of continuing use during the fifth year of registration and must submit a fee and application for renewal prior to the statutory expiration of the registration, which occurs at the end of ten years following registration or prior renewal.
However, for most businesses the benefits of registration far exceed the costs. Owners of unregistered marks are not wholly without recourse in the event of perceived infringement, but their options are significantly limited. Most importantly, owners of registered marks have the ability to file lawsuits in federal court for trademark infringement under the Lanham Act, the U.S. federal law pertaining to trademark protection. Owners of unregistered marks also may resort to federal litigation, but they typically face more difficult burdens of proof and less extensive remedies for proven infringement (e.g., treble damages are available only for infringement of registered marks). In addition, a valid certificate of registration from the USPTO carries with it a number of important evidentiary advantages, including: a presumption that the registered mark is valid, a presumption that the owner of the registration owns the mark, a presumption that the owner of the registration has the exclusive right to use the mark in commerce, and a presumption that the mark is not confusingly similar to any other registered mark. For all of these and several other important reasons (some of which are described here), a business owner with an existing, unregistered mark or a mark intended for future use should not hesitate to speak with an attorney regarding registration.