Trademark 101 Part 6:
How to Protect Your Rights Against Possilbe Infringements
Your business’s identity is one of its most valuable assets. You invest a lot in developing the brands that represent your company and your products to the world, whether it be product names, logos, taglines, or other identifiers – otherwise known as your trademarks. Don’t risk losing that investment – protect your trademarks!
The first step to protecting your trademarks is to register them. But even after you’ve secured a registration, you could weaken or lose your rights if someone else uses your mark, whether you know about it or not. To fully protect your brands, you must take proactive steps, even after registration.
The purpose of a trademark is to distinguish between your product and similar products offered by others. If others use your mark or a similar mark, on similar products, your trademark may lose the ability to distinguish your product from theirs. At that point, your rights become vulnerable to challenges launched by a third party.
To fully protect your rights, it is crucial to identify any uses by third parties that might infringe your rights or that use your trademark as a generic word. This requires monitoring multiple resources for potential infringements, analyzing the legal risk to your rights, and taking action against any infringements or improper uses. This is referred to as “monitoring,” or “policing,” the use of your trademarks.
We can help! Policing your trademarks can requires a significant amount of time, access to multiple resources, and legal analysis. We work with one of the top firms in the country in monitoring trademark usages. They send us a monthly report, which we analyze for any threats to your rights. We then report back to you. If we find any problems, we will work with you to determine the best strategy for addressing the threat in the context of your business goals. Talk to us about our flat fees for monitoring services.
You can select from several levels of monitoring, from watching only for new applications filed with the U.S. Patent & Trademark Office to a comprehensive report that includes federal and state applications, federal publications, and common law (unregistered) uses.
Contact us to discuss which of your trademarks you should consider monitoring and which level of monitoring service best fits your needs, goals, and budget.
Since 2001, our team has helped clients safely use and protect their company names, brands, logos, and taglines. We have represented:
- Family-owned businesses
- Entrepreneurs and individuals
- International companies
- Educational institutions
Our clients come from a range of industries, including
- Brick-and-mortar retailers
- Online retailers
- Consultants and other service providers
- Software and video-game companies
We appreciate that each client’s needs, goals, and resources are unique, and we work with each client to assist them in choosing the options that are right for them.
Among other things, we help our clients:
- Vet the trademarks and other identifiers they want to use and assess any risks in using them
- Strategize and secure the optimum protection available for the client’s trademarks
- Stop others from infringing the client’s trademarks
- Defend against charges of infringement
- Negotiate co-existence and licensing agreements when necessary to protect the client’s rights
In one brief, free phone call, we will:
- Explore your situation and discuss your goals
- Point out any risks you may face
- Identify the options available to you
- Discuss the pros and cons of those options
- Help you make the decisions that are best for your business
- You gain trademark rights simply by using a trademark. Registering your trademark with the Patent and Trademark Office broadens your rights, but it’s not a requirement to obtaining rights.
- Therefore, not finding the mark you want to use in the Patent & Trademark Office database doesn’t mean your mark is safe to use; if someone else is already using it (or a mark similar to yours), they may be able to prevent your use, even without a registration.
- Minor variations in someone else’s trademark probably aren’t enough to keep you from infringing on their mark.
- It is difficult, and may be impossible, to protect a trademark that describes your product.
- Failing to find a particular trademark with a Google search doesn’t necessarily mean it’s safe for you to use the mark.
- Registering your company name with the Secretary of State does not ensure your right to use the company name as a brand or trademark (or to prevent others from doing so).
- Registering a domain name does not give you the right to use that name as a brand or trademark (or to prevent others from doing so).
- Registering your trademarks does give you much broader and stronger rights in them.
Gretchen McCord advises our company on global matters of trademark strategy, registration, disputes, and negotiations, with a focus on litigation avoidance. Gretchen has consistently demonstrated mastery of her practice of law in these areas and has been artful and successful in resolving matters ranging from addressing investor representations and warranties to resolving international trademark disputes. Additionally, Gretchen delivers real value for the price, not just because she competes by charging rates below those of large law-firms, but because interacting with Gretchen is fast, easy and reliable, thereby reducing her billable time (the primary cost of engaging legal counsel).