Trademarks

Protecting a Trademark

Trademarks are protected through registration, maintenance, and enforcement. Trademarks are protected by federal and state trademark laws, as well as by common-law rights that arise from the actual use of a mark. Although it is not necessary to register a trademark or service mark, there are important benefits to be gained from doing so. If a trademark has federal registration, it serves official notice that the trademark belongs to the registrant. Other benefits of federal registration include the evidence of ownership of the trademark, the invoking of jurisdiction in federal courts, the ability to obtain registration in foreign countries, and allowing the owner to file with the U.S. Customs Service to prevent importation of infringing foreign goods. These benefits have significant meaning to a trademark owner in the event that another company or entity in a different geographic market decides to sell competing products under the registrant's trademark, which may not only create customer confusion but also damage the registrant's reputation if the registrant decides to enter the same market. So long as the registrant can provide official documented information proving that registration of a trademark predates the disputed trademark, the registrant has the right to demand that the other party discontinue the use of the trademark, as well as the right to institute civil proceedings for possible damages or lost profits.

Because common-law trademark rights are grounded in actual and prior use, even federal registration does not give a registrant a right to stop others who have used the same mark in their local markets prior to a registrant's application.

Since trademarks identify the origins of products and services, it is of critical importance that a trademark maintain its uniqueness. Failure to maintain a trademark may lead to loss of product or service identity, rendering the trademark generic. Once this occurs, products or services lose their identity and move into the public domain to be used freely by anyone. Major causes of identity loss, such as misuse of the trademark or abandonment of the trademark, may encourage other parties to use the trademark for their own needs. This may not only result in consumer confusion regarding the origin of goods and services but also result in brand damage as customers turn to other sources to fulfill their needs since they no longer feel this product represents the qualities or services that led the customer to purchase it in the first place.

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