There are many advantages to registering a mark with the United States Patent and Trademark Office (USPTO). A licensed trademark can provide “constructive notice” to customers on a national basis. Moreover, if there is a lawsuit, a valid registration can be used to substantiate or prove ownership of the mark.
A trademark is used to inform customers of the source of the items that are being sold. The “source” of the goods or services denotes the company or business that is associated— generally the seller or manufacturer. Trademarks are implemented and enforced to prevent confusion among customers in intrastate and interstate commerce. For example, if two businesses sell the same type of product, one brand may sell better quality; the other may sell knockoff goods. The trademark associated with either brand will indicate and alert the customers to the type of quality and goodwill of the particular company. Both factors play a substantial role in a company’s sales and revenue production.
To prevent conflict, it is essential to conduct a trademark search prior to filing an application. Without a search, there is a risk of great expense in the future. For example, if another business in the same industry files a lawsuit claiming a similar trademark, and that business wins the case, the defendant may be obligated to alter any merchandise that lists the prohibited trademark. When all is said and done, sued company may not survive.
Trademark searches can be very complex because they involve a thorough analysis of registrations under both federal and state law. It is possible for an entity to have legal rights to a mark, even if it is not registered. These are typically called “common law” unregistered marks. Therefore, a search will often surpass the information listed on the USPTO’S “Trademark Electronic Search System” (TESS) database.
On the other hand, if goods or services are being offered by a third party under a similar mark, but the goods or services are very different and the industries are separate, then two similar marks may be allowed to exist simultaneously. Furthermore, if a trademark application has been denied, an attorney can initiate an appeals process with the administrative board. The “Trademark Trial and Appeal Board” (TTAB) is charged with the task of reviewing the case.
Even if a trademark is granted, it is often necessary for an attorney to enforce the mark against others who attempt to usurp the mark. For example, an attorney can draft and send a “cease and desist” letter to any entity using the contested trademark for its business. If the entity does not stop using the mark, a lawsuit can be filed. In dealing with trademark issues, it is important to consult with a competent business attorney to prevent future litigation and unnecessary expenses, and help ensure future prosperity.