[This is part three of our mini-series on branding. In my two previous blogs, I explained the basics of brand selection and brand protection. In this blog I’ll cover what to do when a “bad guy” infringes upon your brand – your valuable trademark.]

A federal trademark registration lasts for 10 years and can be renewed for 10-year periods forever if the mark is being used in commerce. Registration of your brand name, logo, tagline or slogan is legally protected through the US Patent and Trademark Office (USPTO), and as the owner of the brand, you’re offered a number of protections, such as:

• Nationwide protection against other businesses selling similar goods or services
• Placement in the registry so that others can find your trademark when searching the official register before choosing a particular name
• The ability to add the trademark notice of registration to the public through your usage of the small circled letter ® attached to your mark once you obtain your registration.

These protections give you the ability to deter most individuals and/or companies who are considering using the trademark or something similar. Additionally, a US registered trademark is a good platform to obtain rights in other countries – even before you start to do business in those countries.

Be first. In a trademark dispute, the early bird catches the worm.

• A trademark helps customers distinguish between products
• A trademark protects the owner's investment and reputation

Priority of rights is critical in a trademark dispute. So, to secure priority:

1. File your trademark application as early as possible; or
2. 2. Get to market before others do so, or before they file their trademark application. Without a registration, you may rely upon common law trademark rights.

So, for example: You file your trademark application on May 1, 2018. The other party starts use of a trademark that is identical or confusingly similar to yours on January 1, 2019. Your trademark application remains pending but you don’t get to market until 2020. If you get that trademark registration, your rights go back to the filing date (May 1, 2018) even though you didn’t begin selling your goods or services under the mark until after the other party did. You would have priority. So, file early!

I have discussed the many benefits of obtaining a trademark registration. It should be noted, however, that under certain circumstances, you can enforce your rights in an unregistered trademark based upon your common law rights -- through use of the trademark to offer your goods or services.

How will you know if your trademark is being protected?

The purpose of trademarks is to prevent consumer confusion. Consequently, when deciding whether to grant registration of a mark, the USPTO will compare the mark in the application to those that are already registered, and applications that were filed before yours.

The USPTO will publish pending trademarks before issuing a registration so that any brand owner can file an opposition. If it’s determined that the pending brand name infringes on an established brand name, then the registration will be denied. It’s also possible to petition to cancel a trademark registration if that registration conflicts with your trademark in which you have superior rights.

The Legal Process

Beyond the denial of pending brand names, a registered federal trademark gives you the ability to stop another business from using a name that’s likely to be confused with yours. In that case, the first step is typically to have an attorney conduct a proper factual investigation and then possibly send a cease and desist letter to the owner of the competing business. In the best case scenario, it ends there.

But if a cease and desist letter doesn’t do the trick, you may need to go to court to prove your claim. With a registered trademark, you can bring an action in federal court, and walk into court with the presumption of validity. If you’re able to prove infringement, you are entitled to:

• a court order (injunction) that the other business stop using the mark
• an order requiring the destruction or forfeiture of infringing articles
• monetary relief, including the profits, any damages sustained, and the costs of the action; and
• an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

How does the court decide a trademark claim?

If you believe another business has infringed on your trademark, you must prove that your trademark has priority. This can be proved either by the date a trademark was registered, or by the fact that your mark has been in use for a longer period of time – it’s "senior" to the defendant's. Further, you have to be able to prove that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the mark.

Simple, right?

Of course, there are many more far-ranging details and legal considerations involved in trademark disputes and enforcement, but this should give you a sense of the basics. If you’re interested in learning more about brand names and the legal advantages of registering a trademark, I’d be happy to answer your questions. Contact me at masteiner@duanemorris.com.

Mark A. Steiner practices in the area of intellectual property law, with a focus on trademark and copyright law. Mr. Steiner offers clients a strong combination of trial experience, counseling, enforcement, procurement and licensing expertise in matters concerning trademarks, trade identity, Internet domain names, copyrights, trade secrets and unfair competition. He has represented companies ranging in size from start-ups to Fortune 500 in a wide variety of industries, including e-commerce, computer hardware and software, networking, retail, architectural and engineering-design services, personal-care products, sporting goods, clothing, toys and games, food and beverage, and hotels and restaurants. He serves as intellectual property counsel to companies at various stages of development, from inception to maturity. Mr. Steiner regularly assists clients in the management and enforcement of domestic and international trademark portfolios.