Willful trademark infringement occurs when a user of a mark knows or should have known that the mark was already being used by another. Recent court decisions have noted that a user can be found liable for willful infringement if they failed to conduct a reasonable search of existing similar trademarks. Further, there is a rebuttable presumption of willful infringement when the mark in question is federally registered.
Contact us if you believe someone has infringed on your trademark.
In order to properly maintain a registered trademark, filings are required by the U.S. Patent and Trademark Office. Other than a Section 8 Declaration, a registrant must also file a Section 9 Application For Renewal between every 9th and 10th year after the registration date. Similarly to Section 9, the federal government provides a six-month grace period to file, but will be subject to a late fee.
Since this filing schedule corresponds with the second and each subsequent Section 8 Declaration, the USPTO has provided a Combined Declaration of Use in Commerce & Application for Renewal of Registration of a Mark Under Sections 8 & 9, which allows a registrant to complete these filings together. Failure to timely file a Section 9 will result in the trademark being cancelled.
Common Law Trademarks
Under common law, some rights to a mark can be established by the first person to use a specific mark in a commercial setting. These rights are very limited and difficult to enforce, which is why a registering a trademark is significantly beneficial.
Registered Trademarks
Registration of a trademark affords additional protections that common law rights do not provide. See our previous post on the Benefits of Trademark Registration.
The ® Symbol
The most obvious advantage of trademark registration begins with the right to use the ® symbol. This symbol may be used once a trademark is registered with the United States Patent & Trademark Office (USPTO) and is considered a “Federally Registered Trademark.” This not only gives your products or services more marketing cachet, it puts competitors on notice that you are serious about protecting your intellectual property rights.
On the other hand, any distinctive name, symbol or word can be designated as a protected mark by using the ™ symbol. This notifies the public that an individual or company claims that name/symbol/word as a brand and sees it as protectable.
In the event of a dispute with an unregistered trademark, the owner must prove that it was the first to use the name or design. Unregistered trademarks are often weak when it comes to legal protection, however, as the owners often lack the evidence required to establish a common law trademark right that they can use against a trademark infringer. This is because companies experienced enough to keep proper records of trademark use are also smart enough to apply for a trademark registration at the outset.
Notice and Priority
Federal trademark registration grants nationwide “constructive” notice of your ownership, which means, by law, that anyone knows or should know about your mark. . This creates a legal obligation on anyone conducting marketing activities to be aware of any similar registered trademarks because they can be found in a trademark search. This also prevents a party from claiming a subsequent adoption of a similar mark was made in good faith, and consequently the registration of confusingly similar marks. The USPTO has a duty to cite prior registrations against new trademark applications for confusingly similar marks and to refuse registration of these marks. In essence, the government is helping you by preventing brands similar to yours from being legally protected at no additional cost.
Proof of Ownership
Trademark registration also establishes a legal presumption of your ownership of the mark and your exclusive right to use the trademark nationwide on or in connection with the goods and/or services listed in the registration. This means you do not need to prove that the mark is valid in court. If you cannot prove your ownership and exclusive right to the court, your case may be dismissed at the outset, which is just one significant reason for why a common law, unregistered trademark is less useful than a registered trademark. Without a trademark registration it is costly to prove that you are the true owner, that there has been continuous use of the mark, and that the mark is valid.
Federal Claims and Recovery
Trademark registration grants the owner the right to bring a claim in federal court. In some cases, registration permits the owner to obtain triple the amount of actual damages plus attorney fees, providing for a significant monetary recovery. Although these types of maximum damages are rare and require a showing of willful trademark infringement, a federally registered trademark creates the presumption of willful infringement if a similar mark is used by someone else.
In the event of counterfeiting, the owner of the mark may also be entitled to statutory damages, which provides relief to the trademark owner without having to show actual damages.
What is a trademark?
A trademark is a word, symbol, or phrase, used to identify a particular company’s products and distinguish them from the products of another. Trademarks protect the words and symbols that identify the sources of goods and services
Example: The Nike brand name and its accompanying “Swoosh” logo are used to identify the various products manufactured by Nike. When a consumer sees the the “Nike” brand name or the “Swoosh” logo, the consumer will be able to distinguish a Nike product from products made by competitors (e.g., Adidas).
What is a service mark?
If the company provides services instead of products, their brand names and/or logos are “service marks” but these are generally treated the same as trademarks. Similarly to trademarks, a service mark may include names, words, logos or symbols.
What is the difference between a trademark and a registered trademark?
Any distinctive name, symbol, or word can be designated as trademarked by using the symbol ™. The ™ symbol notifies others that the company owns the product’s name and design. However, a company is not protected from another producing a similar product or using name by simply using the ™ symbol.
In the event of a dispute with an unregistered trademark, the company must prove that it was the first to use the name or design. Further, a trademark that is unregistered may be left without a legal defense.
A registered trademark is identified by the symbol ®. This symbol may be used once a trademark is registered with the United States Patent & Trademark Office (USPTO) and is considered a “Federally Registered Trademark.”
Do trademarks, copyrights, and patents protect the same things?
No. Trademarks, copyrights, and patents protect different types of intellectual property.
A trademark typically protects brand names and logos used on goods. A copyright protects an original artistic or literary work. A patent protects an invention.
What is Eligible to Be a Trademark?
There are 2 requirements for a mark to be eligible for federal trademark registration: use in commerce, distinctiveness, and no prior conflicting trademark rights.
Use In Commerce
When applying for trademark registration, the trademark must either be (1) in actual “use in commerce” or (2) intended to be “used in commerce”. This means that the mark is actually being used to sell and market the goods/services listed in the trademark application. Note that “Use in commerce” is a legal term of art and there are literally thousands of trademark applications stalled at any given moment because the applicant has not properly submitted evidence of “use in commerce”.
Distinctiveness
The second requirement for registration is distinctiveness, which means the mark must not be generic or merely descriptive. The more distinctive a mark, the stronger the mark, which in turn provides more protection and the likelihood of a successful application increases.
A generic term is not capable of being trademarked under the law as it is merely a common name for a good or service. Examples of generic terms would be “COMPUTER” for consumer computers and “APPLE” for apple juice company.
A merely descriptive mark identifies the qualities, characteristics, features, or uses of a product or service and only allow for limited protection. Examples of merely descriptive marks would be RENT-A-VIDEO for video store and DELICIOUS for restaurant.
On the other hand, marks that are suggestive, arbitrary or fanciful have the highest levels of protection.
A suggestive mark will suggest a feature or quality of the underlying good or service but does not describe them. The difference between a suggestive mark and a merely descriptive mark is that a suggestive mark requires one to use their imagination to associate the mark with the good or service. Examples of suggestive marks would be TREND ELEVATION for social media marketing consultancy, GEAR FOR THE HIGH LIFE for men’s clothing, and PIT STOP for fast food restaurants,
Arbitrary marks are words, terms or phrases that have no logical relationship to the underlying good or service. A often-used example of an arbitrary mark is APPLE for computers, while other examples could be RED FOX for women’s clothing or ANIMAL for Software-as-a-Service (SaaS) for personal accounting.
The strongest form of mark is a fanciful one. A fanciful mark is a word, term or phrase that is made up by the owner. Well known examples of fanciful marks are STARBUCKS and ZYNGA.
How Long Does a Trademark Last?
Under common law, a trademark will last as long as the owner uses the mark. Without registration, a failure to enforce common law/unregistered rights may relinquish those rights.
A federally registered trademark will provide protection for 10 years and is renewable for additional 10-year periods. However, the USPTO requires that between the fifth and sixth year after the date of registration, the registrant must file an affidavit stating that the mark is still in use. If no affidavit is filed, the registration is automatically cancelled.
