The rewards for savvy trademark use in business are substantial. You can avoid crippling legal trouble by steering clear of trademark infringement. More importantly, you can grow your trademark into your company's most valuable asset.
The Importance of Selecting a Strong Trademark
- Not all marks have the same legal rights. Some trademarks receive broad & sweeping protection, while others receive very "thin" and minimal protection. The "legal strength" of a trademark determines this scope of protection.
- The more a trademark describes the products or goods sold, the weaker the trademark is from a legal perspective.
- Trademarks that are descriptive not only have a narrow scope of legal protection, but they are usually more expensive to register and protect in court, if they can be protected at all. That is because you have to prove the trademark has acquired secondary meaning (i.e. has become known by consumers as a brand identity rather than a product description).
- The stronger the trademark is from a legal perspective, the more value that trademark can hold as an asset as your business grows.
Avoiding Trademark Infringement
- Prior to adopting a trademark, search to see if your mark will infringe a pre-existing mark. Searching can be very expensive when done by premiere searching firms, and it can be free if you do it yourself at the USPTO website.
- The rules for searching and clearing a trademark for use are complex, and involve legal knowledge to be done with precision.
- Even with exhaustive effort to avoid infringement, you may in rare instances find yourself faced with a demand to stop using a trademark based on a trademark infringement claim. Thus, trademark adoption is never without risk. Legal advice is important because it helps you manage that risk, even if you cannot completely avoid risk.
- Registration is not required to own rights in a trademark, at least not in the United States and a handful of other countries. Most countries require registration. The US grants ownership in marks if you are the first to use a trademark in commerce.
- "Registration" almost always refers to filing an application with the United States Patent and Trademark Office. However, each state also registers and maintains trademarks registries, typically used for marks not qualified for federal registration.
- BEWARE; in some situations, registration is not advisable. It could cause attention you do not want, if you are in fact infringinging another's trademark. There is no one-size-fits-all answer to deciding whether to register.
- Registration is more complex than would seem necessary, and more difficult than many non-attorney websites make it sound. While some marks sail through, others cause all sorts of trouble for the owners.
Using and Maintaining a Trademark
- Always use the (R) TM or SM symbols. Use TM for goods and SM for services that are not federally registered. Use (R) only if your trademark is federally registered.
- Do not use your own trademark as a noun. That could cause loss of rights through genericide. Use the trademark as an adjective describing the good or service. Eg. Kleenex brand tissues, where "brand tissues" is being described by the brand name, Kleenex.
- Do not let others use your trademark without seeking legal advice. There are important rules for trademark licensing. Failure to adhere to these rules may diminish the strength of your mark, or may even lead to complete abandonment of your trademark rights inadvertently.