4.8 Establishing Trademark Protection

Trademark protection is a crucial aspect of intellectual property law. It involves registering unique marks with the USPTO, conducting searches, and navigating the application process. This safeguards brands and prevents consumer confusion in the marketplace.

Establishing trademark rights requires actual use in commerce or filing an intent-to-use application. Maintaining protection involves proper usage, renewals, and enforcement against infringers. Additional protections like trade dress and dilution further strengthen trademark rights.

Establishing Trademark Protection

Process of trademark registration

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• Conduct a trademark search ensures the mark is available and not already in use by another party (Apple, Nike)
• File an application with the USPTO by providing the mark, goods/services, and filing basis along with paying the required fees
• USPTO examines the application to ensure the mark meets legal requirements and issues office actions if there are any objections (descriptiveness, likelihood of confusion)
• Mark is published for opposition which is a 30-day period for third parties to oppose registration (prior users, similar marks)
• If no opposition, the mark is registered and the owner receives a registration certificate
• Benefits of trademark registration include:
  • Constructive notice of ownership prevents others from claiming innocent adoption of the mark
  • Prima facie evidence of validity and exclusive right to use the mark nationwide
  • Ability to use the ® symbol to indicate registration (Coca-Cola®, Microsoft®)
  • Basis for foreign trademark applications through international agreements (Madrid Protocol)
  • Increased remedies against infringers such as statutory damages and attorney's fees
  • After five years of continuous use, the mark may become incontestable, providing stronger protection against certain challenges

Establishment of trademark rights

• Common law trademark rights are acquired through actual use of the mark in commerce in connection with the sale of goods or services (restaurant name, product packaging)
• Common law rights are limited to the geographic area where the mark is used (city, state, region)
• Rights continue as long as the mark is in continuous use in commerce
• Trademark clearance involves conducting a comprehensive search to ensure the mark is available for use and registration
• Priority of trademark rights:
  • First to use the mark in commerce has priority over later users (seniority)
  • Constructive use priority can be established through an intent-to-use application before actual use begins
  • Concurrent use may be allowed in limited circumstances where two parties use similar marks in different geographic areas

Maintenance of trademark protection

• Continued use of the mark in commerce is required to maintain trademark rights (abandonment)

• Proper use of the mark as an adjective, not a noun or verb, and distinguishing it from surrounding text through capitalization or stylization (Xerox, Kleenex)

• Avoid genericide by preventing the mark from being used as a common name for the goods/services (aspirin, escalator)

• Renewal of trademark registration:

  1. Between 5th and 6th year after registration
  2. Between 9th and 10th year after registration
  3. Every 10 years thereafter

• Enforcing trademark rights:

  • Monitor the market for potential infringers using trademark watch services
  • Send cease and desist letters to infringers demanding they stop using the mark
  • File trademark infringement lawsuits to prove likelihood of confusion among consumers (similar marks, related goods/services)
  • Defend against challenges to the mark in opposition proceedings (prior to registration) and cancellation proceedings (after registration)

Additional Protections

• Trade dress protection extends to the overall visual appearance of a product or its packaging
• Dilution protection for famous marks prevents blurring or tarnishment of the mark's distinctiveness
• Use in commerce is essential for maintaining trademark rights and can include sales, transportation, or advertising of goods or services under the mark