Trademark 101 Part 5:
How to Use Trademarks Correctly (so you don’t lose rights)
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. But using your trademarks incorrectly can risk losing some or even all of your rights, even if registered your trademarks.
You can prevent this by following a few simple rules:
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).
U.S. Patent and Trademark Office (“USPTO”)
Trademark Electronic Search System (USPTO database)