Steps in Protecting Rights in a Trademark Once it is Selected

July 11, 2016

Randal J. Brotherhood

Once a business selects a trademark, the key next steps consist of, first, searching the trademark and clearing it for use, and, second, applying for federal registration of the mark with the U.S. Patent and Trademark Office (PTO).  

As for the first step, a trademark search is an absolutely crucial, yet sometimes overlooked aspect of trademark protection. The purpose of a trademark search is to identify potential risks by determining whether there are any trademarks already in existence which could force the owner of the new mark to stop using it or otherwise limit the new trademark owner’s ability to use it in connection with its product or service.

Getting a cease and desist letter from the owner of a prior mark and having to stop using a trademark after it is put into use can be catastrophic if a business has expended substantial resources in implementing the mark and developing public awareness of it in connection with the business’s product or service.

Most trademark attorneys use a two-step approach to trademark searching. The first step is what is referred to as a “knockout” trademark search. A knockout search is a quick search for identical or nearly identical trademarks using publicly available sources such as the U.S. Patent and Trademark Office’s database of registered trademarks, and the internet.

The purpose of the knockout search is to identify, right out of the chute, any obvious and easily-identifiable obstacles that might prevent the business from further considering its prospective mark.

Clients often want to base their decision on the results of the knockout search alone, but there are serious limitations on this type of search. Knockout searches are, by their nature, preliminary and not comprehensive—they usually only detect the easy and obvious “low-hanging fruit.”    

So, it is important to then obtain a comprehensive, methodical search of U.S. trademark sources, which is the safest and best way to assess the entire universe of risks that exist in moving forward with the selected mark.

In addition to providing a more detailed and comprehensive review of PTO filings, the comprehensive search includes a methodical drilling down into various proprietary business and industry databases and directories, state trademark registrations, and domain name registrations.

Trademark searches are usually done by specialized search firms commissioned by trademark lawyers who then evaluate these searches. The search firm delivers a thick, written report containing references and detailed information about all trademarks that are either identical to the client’s mark or which, in the search firm’s judgment, could be considered confusingly similar to the client’s mark.  

The trademark lawyer then reviews and evaluates the information in the search report in relation to the legal standards for determining, among other things, whether there is a “likelihood of confusion” in the marketplace between the client’s mark and any of the other marks noted in the report. The lawyer will then provide the client with advice regarding whether the mark is “clear” for use and registration or whether potential conflicts with such other marks can be anticipated.

While there are limitations on the effectiveness of both knockout and comprehensive trademark searches, they are a very important and necessary part of the trademark process and will usually save a business a lot of time, money and stress if it turns out there is another mark already in use that could expose the business to a trademark infringement action.

So, once a trademark makes it through the trademark search phase, the primary way to then proceed to protect rights in a trademark is to register the mark at the federal level with the PTO.   

However, it should be noted that it is not necessary to obtain either a state or federal registration to be able to protect a mark, because legal rights in a mark are based upon use of the mark in commerce, and not registration of the mark.   

Although unregistered trademarks receive some protection under the common law and under the federal trademark statute known as the Lanham Act, trademarks in most cases should be further protected through registration under federal law in order to obtain the significant substantive and procedural rights that federal registration affords the trademark owner.

A federal trademark application is usually filed electronically with the PTO and must indicate one or more of 40-plus available classes of goods or services in which the mark is used. The application also sets forth a description of the goods or services which meets strict PTO standards for the class or classes noted.   

Federal trademark applications are carefully evaluated by trademark lawyers at the PTO, approval is not a slam dunk and if the examining attorney raises legal objections, the application process can take a good number of months and even more than a year.

Federal registration can be on one of two registers maintained by the PTO—the Principal Register and the Supplemental Register. For purposes of our discussion, I’m going to focus only on the Principal Register, which is where most strong trademarks—that is, those that aren’t merely descriptive of their goods or services—are registered, and which provides the greatest degree of protection.

One of the primary benefits of federal registration is that it acts as a bar to the registration of another confusingly similar mark. If someone else tries to register a mark that the PTO considers to be confusingly similar to yours under prevailing legal standards, the PTO will prohibit registration of that mark.

But there are other benefits, including the right to use that little “r-in-a-circle” registered trademark symbol, which provides notice to the world of your registration and that you intend to assert your legal rights in your trademark.

Additionally, federal trademark registration provides numerous procedural advantages, including the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including, in some cases, treble damages and attorneys’ fees.  

Registration also entitles the registrant to nationwide priority based on the filing date of the trademark owner’s registration application. It also allows the registration to become incontestable after five years of registration, which then creates conclusive evidence of the owner’s exclusive right to use the mark, subject to certain statutory defenses.

I’ll be discussing other aspects of trademark law, including how to use--and not use—a trademark, and when and how a business should enforce its trademarks, in a future post.

Randy Brotherhood devotes a substantial part of his practice to intellectual property, including patents, trademarks and copyrights. If you have any questions or would like to learn more about business trademark registration and protection, please contact Randy at rjb@mtfn.com or call (414) 273-1300.