On Trademarks

Posted by David Breiner in June 2014 on 6/18/2014

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Most people are familiar with trademarks. The Nike "swoosh", for example, allows consumers to quickly and easily identify a maker of athletic gear. McDonald's golden arches allow for patrons to quickly and easily identify a McDonald's restaurant. These marks generally serve a dual purpose: 1) to identify the manufacturer of a good; and 2) prevent consumer confusion.

Many people believe a trademark must be registered with the government before a right in the mark may be claimed. This belief, however, is not entirely accurate. What many people fail to understand is that a right to a mark may begin as soon as the mark is used in commerce. This is what is known as common law trademark rights. Although common law rights to a mark may suffice for certain businesses, the rights themselves are rather limited. In particular, the common law rights extend only to the geographic region in which a business operates and to the actual markets the business has penetrated. This means that a business operating solely in Iowa would have very little right to prevent another party from using its mark in another state, such as California. This limited protection could cause a problem for businesses wishing to expand nationwide.

Businesses with an eye towards growth should consider registering their trademark with the United States Patent and Trademark Office ("USPTO"). Registering their mark has several advantages. 

  • First, successful registration of the mark will give the trademark owner nationwide priority for use of the mark. Thus, registering your trademark may allow you to prevent other parties from later using your mark even if you are not currently marketing your products in their geographic region. 
     
  • Second, registering your mark may deter other parties from using your mark. For example, a competitor desiring to use a mark similar to yours may opt to select a different mark in order to avoid a potentially costly trademark infringement suit. 
     
  • Third, having a registered trademark not only gives you the right to sue in federal court but can, in some cases, allow for enhanced damages. For example, if an owner of a trademark can show a trademark infringement was willful, the trademark owner may collect not only treble damages (actual damages x 3) but may also collect attorney's fees. 

These are but a few reasons a business owner should consider filing their trademark with the USPTO.

A company's trademark could very well be their most valuable asset. Thus, a company should take steps to protect its mark, especially if it foresees any significant growth in the future.

David M. Breiner is an associate at BrownWinick and his practice includes patent application preparation and prosecution. David can be reached at (515) 242-2411 or breiner@brownwinick.com.