by Ruth Binger
Trademarks are a vital aspect of intellectual property, offering unique proprietary rights with several advantages. Unlike other forms of property, a brand or trademark can remain valuable indefinitely with proper care. In fact, trademarks tend to increase in value with use. They can be sold or licensed, making them reasonably liquid assets. Additionally, trademarks serve as powerful marketing shortcuts, influencing consumer purchasing decisions for a company’s goods or services.
However, there are misconceptions surrounding the protection trademarks provide. Incorporating, qualifying to do business, or reserving the business name with various Secretary of State offices provides limited brand name protection. The right to exclude others from using a similar name on goods and services is not automatically granted. Conduct a thorough trademark search of any new corporation or LLC name used to identify a product or service to determine the availability of a mark for your specific purposes and ensure the name does not infringe on another entity’s trademark.
Trademark registration is not mandatory to establish a protectable and exclusive right to a mark. Registered trademark remedies are injunctions and damages, but often the only remedy for an unregistered mark is an injunction. Under common law, trademark rights can be obtained within a specific geographic area of use. State trademark registration does not offer protection beyond these rights.
Registering a trademark or service mark with the U.S. Patent and Trademark Office (USPTO) provides the most comprehensive and cost-effective method for obtaining extensive coverage. Distinct advantages of USPTO registration include:
1. Reserving the mark for future use throughout the entire country, even if the present use is limited to a small geographic area.
2. Serving as evidence of exclusive ownership, shifting the burden of proof to anyone challenging those rights.
3. Performing an extensive examination which includes determining whether the chosen mark is capable of distinguishing the applicant’s goods or services from others.
Because federal trademark registration with the USPTO is a complex procedure, seeking expert advice is advisable. An application can be based on actual use of the mark in interstate commerce or on a real intention to use the mark in commerce in the future. However, the registration certificate will not be issued until the mark is used in the ordinary course of trade.
Trademark rights continue indefinitely as long as you do not abandon the mark, file necessary affidavits of use, and fulfill certain requirements. Actively police the use of your trademark to maintain its significance of it to prevent it from losing its distinctive character and becoming a generic term (e.g., “aspirin”).
To ensure ongoing protection, maintain the federal trademark registration by filing a declaration during the sixth year after issuance, confirming that the mark is still being used in legitimate interstate commerce in the ordinary course of trade.
Additionally, renew the registration every 10 years if the mark remains in use. By consistently using the mark in the appropriate manner, you can potentially own it indefinitely.
Establishing and protecting your trademark rights and avoiding liability for infringing third-party rights can be key to transforming potential market opportunities into business and financial success.
Authored by Ruth Binger, corporate attorney with Danna McKitrick, P.C., and Sarah L. Ayers, law clerk. Binger serves both emerging and mature businesses concentrating in corporate law, intellectual property and technology law, cybersecurity, digital media law, and labor and employment law. Her commitment to the success of small to medium-sized businesses, and her understanding of multi-faceted issues inherent in operations, are what distinguish Binger’s practice. Ruth can be reached at 314.889.7167 or rbinger@dmfirm.com. Ayers is a law clerk with Danna McKitrick. She attends Saint Louis University School of Law and is a graduate of Westminister College.