Trademark Registration - Protecting Your Most Important Asset
ARTICLE PRINTED UNDER LICENSE WITH THE AUTHOR.
The Author is a practicing Internet Attorney in the Tampa, Florida area. You can visit the web site of his law firm at www.fisherpa.com
John H. Fisher, Attorney At Law
Trademark Registration - Protecting Your Most Important Asset
An important, and oftentimes the MOST important asset of an online business is its domain name. It is of vital importance, as discussed in a previous article that you assure that this name does not infringe upon the rights of other parties. Of equal importance is taking the necessary steps to protect your name against use by others.
IMPORTANCE OF FILING A REGSTRATION
Trademark rights arise upon use. It is not necessary to file a state or federal trademark registration in order to claim infringement. In the United States, proprietary names can gain common law protection and this protection is available even without having a registration filed.
Filing a federal trademark application does have some very distinct advantages however and it is recommended that anyone who is serious about protecting their name from use by others file state and federal trademark applications. As a practical matter, if you determine that another party is utilizing your name, it is much easier to get them to stop if you have a federal registration in hand. Without this registration, this type of dispute often requires you to demonstrate to the allegedly infringing party that you have rights to the name before they will even consider stopping their use.
These types of disputes can also get into the "who used the name first" dispute and your letter to them directing them to stop using the name can turn back on you and result in you deciding that it is a risky proposition to continue using the name. Additionally, the remedies available under federal law give you a stronger hammer to use against an alleged infringer. If that party wishes to argue about your rights to the name and they turn out to be wrong, and if they continue to use the name during the interim, this can be strong evidence of willful infringement that can give you punitive damages and attorney fee awards.
ADVANTAGES OF REGISTERING YOUR TRADEMARK
Advantages of filing federal registration include some of the following.
Access to Federal Courts. Generally, unless federal trademark registration has been secured, you will be limited to suing in state court under common law theories of recovery. Presumption of ownership and validity of the trademark. If you have a filed and received registration of your trademark, you are presumed to be the owner of the mark. That is not to say that you are absolutely the owner. However, any party challenging your ownership will have a strong presumption of ownership to overcome. If you have not filed an application and received registration, no such presumption will attach and you will need to fully establish your trademark rights with the burden of proof being on you.
Federal Remedies. Without a registration, you will be limited to the damages for infringement that you can actually prove. Federal law provides additional remedies such as the possibility of obtaining punitive damages and attorney fees against willful infringers. As a practical matter, the possibility of these types of damage give you a much stronger "hammer" to get infringers to cease from using your mark. If they continue to use your after warning, the potential consequences are very high.
Foreign Piggyback Rights. Your federal registration can sometimes be piggybacked on foreign rights. In other words, in some foreign countries the procedures for obtaining registration are simpler if a US registration has been received. Additionally, a federal trademark can be recorded with the United States Customs Service, which can assist in preventing the importing of goods that may violate your rights.
InterNIC Rights. If you do not have your domain name but do have a federal trademark, you will have more strength with the InterNIC if a third party secures a domain name that infringes upon your federal trademark. Generally, InterNIC policies and federal case law arising therefrom are abhorrent to domain name pirates.
STEPS INVOLVED IN FILING A REGISTRATION
Here are the basic steps involved in filing a federal registration. Select A Name. You should choose a name that does not interfere with the rights of anyone else. Search For Infringement. It is important that the name that you select does not interfere with the rights of any third party. A full common law search should be performed to pick up any parties who may have rights to our selected name but have not filed a trademark application.
Complete Trademark Application. It is important that the correct form be chosen, that is properly filled out, and that the proper specimens and other material are included with the application. Trademark office procedures are very complex and must be strictly complied with. Send in Registration. The completed package along with payment of filing fees should be sent to the Trademark Office.
Look For Confirmation. The Trademark Office will send confirmation of receipt.
Look For Office Action. The Trademark Office will assign a reviewing attorney to look over the application. That reviewing attorney will transmit an Office Action which will summarize the various reasons why you are not entitled to the trademark and/or the various limitations on the rights you are given.
Respond To Office Action. This Office Action must be responded to and often requires you to make arguments why you are entitled trademark rights or a broader scope of trademark rights.
CAN I FILE FOR A TRADEMARK ONLINE AND CAN I HANDLE IT MYSELF?
Sure. There is no requirement that you use an attorney. The actual registration is relatively simple and you can fill out the forms yourself. As with all legal matters however, it is suggested that you consult with an attorney. It is also possible that a response to an initial office action and perhaps even an appeals process will be necessary. In that case, attorney guidance is important.
GO TO OUR "DO IT YOURSELF" TRADEMARK PACKAGE FOR ALL OF THE FORMS AND INSTRUCTIONS THAT YOU NEED TO FILE YOUR FEDERAL TRADEMARK REGISTRATION.
About Trademark searches from this web page. We do not perform the trademark searches that are ordered through this web page. The links on this page are to an independent company in which we have no ownership. However, we do utilize the services of this company for trademark searches for our customers and have been extremely satisfied with the results that we have obtained. However, we are not responsible for the performance of the trademark searches and have no control over the party performing the search. We have supplied the link on this page as a service to our customers and others accessing this page.
