Optima Law Group Blog

The Basics of Trademark Protection

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same, but for services (not goods). All points made in reference to trademarks in this article are also applicable to service marks.

Trademark laws are primarily concerned with preventing marketplace confusion. Companies invest capital into marketing their products and services, and trademarking those marketing devices protects them from infringement. By obtaining trademark registrations, these companies add to their intellectual property portfolio and increase the company’s valuation. Two main concerns with marketplace confusion are that a consumer will mistakenly purchase a good or service, and that a company will use another’s mark and wrongfully benefit from the good will that the mark enjoys. 

Aside from the increase in company value, the main benefit of registering a trademark is the ability to prevent others from using the mark in a manner likely to create marketplace confusion. This provides protection against another company spoiling the good will that has been created in the mark, and prevents another company from taking part of the market share by wrongfully using the mark. A registered trademark creates a presumption of ownership in the registered owner of the mark, it places all other companies within the United States on constructive notice of the mark, after a period of time it makes the mark incontestable, and it may increase payment in a willful infringement case.

Ideally, registering a trademark would be enough to prevent infringement. In many cases it is, however, trademark owners must remain vigilant in enforcing their rights.  It is important for the owner of the mark to routinely check USPTO records and the marketplace for anyone who may be infringing their mark and take appropriate measures. Where some question exists about who has rights to a mark, the mark will be registered to the applicant who is able to show the earliest use in commerce. Additionally, in enforcing a mark, the owner must be aware of the class or classes in which their mark is registered. Remember, the ability to stop another from using a mark is dependent on the use of the mark being potentially confusing to consumers. Therefore, a mark registered and used in the apparel class will not likely prevent the same mark being used in the food and beverage class. Some marks, however, are so strong that they occupy the field in many classes. Consider Coca-Cola, for example. While typically associated with a beverage, the mark is so strong that the same mark would not likely be registered to a clothing company. 

Generally, in order to register a trademark the USPTO requires that the mark be used in commerce, the mark is not generic/descriptive, and not so close to another existing mark as to cause a likelihood of customer confusion in the marketplace. When an applicant intends to use the mark in commerce, but has not yet, the applicant can apply to reserve the mark. The more unusual a mark is, the more likely it is to be eligible for trademark. A mark that is merely descriptive or generic will be considered weak and might not be eligible for registration. A computer company would not likely succeed in trying to register “computer” as a trademark for one of their products since that merely describes the actual product, however “MacBook” is sufficiently unique and non-descriptive to allow the mark to be registered.

We will be diving deeper in specific aspects of trademark protection in the near future. Stay tuned!