This week’s blog post will outline the basics and the importance of Trademark protection. Because this blog is brief, it is not intended to be fully comprehensive or informative of all Trademark laws, and if you have more questions, please reach out to the DuFord team!
The catalyst for this blog was the recent settlement in a case involving the famous band, The Eagles, and their trademark for Hotel California. The Hotel Defendant withdrew its’ application in January 2018, and the parties have settled their claims, but why was the dispute so big?
Even if you are not a musical rock-star, maintaining the goodwill of a product or service is a top priority. As a business owner or an individual who is about to start a business, you want to set the course for the success of your business and so it follows that your products or services deserve protection.
First, you might ask, what exactly is a Trademark? A trademark is a word, phrase, image, logo, sound or package design that helps a consumer distinguish between one company’s products/service and another company’s products/service. Typically, the trademark will protect brand names and logos used on goods and services and once you register your Trademark you have rights to that mark anywhere in the country.
In order to register for a Trademark with the United States Patent and Trademark Office (USPTO) you must have a mark that is used in connection with goods or services in interstate commerce. USPTO Attorneys look at the following categories of marks in this spectrum: fanciful, arbitrary, suggestive, descriptive, and generic. The closer a mark is on the spectrum to fanciful or arbitrary, the more likely it will be accepted and move forward with the registration process.
Trademark was a common law creature, until the Lanham Act of 1946, which means that rights were acquired by use and expanded with geographic territory use. However, these days, the Lanham Act is the governing piece of legislation and once registered, Trademarks create a limited monopoly for the owner with regard to the uses of the mark in business.
Now that we have confirmed what a Trademark is, you might be asking yourself, do I want to register my mark for protection? Should I register with the United States Patent and Trademark Office (USPTO) or with the Secretary of State (SOS) of California?
Good question! Registration gives you certain rights that common law trademark may not- particularly the right to file a lawsuit against someone using your mark. However, whether your mark is better suited for a state versus federal trademark status depends on a number of things. The main concern is whether you are using the mark on goods or services outside of the State of California, meaning INTERstate commerce. If so, you may be eligible for federal trademark registration. On the other hand, if you are only utilizing the mark in INTRAstate commerce, registration with the CA SOS may be the best path for you. Without knowing the specific facts surrounding use of the mark, we can’t say that registration would be granted.
That being said, here at DuFord (it’s such a lovely place), we offer Trademark Services including assessment of mark strength, preparation of non-disclosure agreements, preparation and filing of Trademark applications, and drafting of Trademark assignment agreements.
As discussed, registering your mark is essential to the success of your business and the protection of your good-will. Your business or potential business may not be quite as big as The Eagles right now, but all of that could change! As your business rock-star status awaits, thinking about the process will get you ready to move forward with your mark when the time comes.
#trademarklaw #markyourmark #protectyourmark