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How Can I Protect My Trademark Or Patent From Being Infringed Upon?

by | Dec 22, 2021 | Firm News |

One way to protect a trademark from infringement is to select a strong mark. There is something called the spectrum of distinctiveness in trademark law, which goes from something that is generic (i.e. having no distinctiveness whatsoever), to something that is fanciful (i.e. completely made up and therefore highly distinctive); the more distinctive a mark, the stronger the mark. Many people try to obtain a trademark on something that describes the goods and/or services that they are offering or some characteristic or quality of those goods/services, and they do this for an obvious reason; they want potential consumers to see their mark and immediately understand what’s being offered. Unfortunately, the problem with this tendency is that these marks are inherently weaker than they could be, because a trademark is there to identify the provider of the goods/services rather than the goods/services themselves.

The more the trademark has to do with the goods or services being sold, the less the government will allow one party to prevent others from using that word in association with those goods or services. For example, pizza is a generic term for people engaged in selling pizzas. Pizza Hut effectively has no right to prevent other pizza places from using the word “pizza” in their name, because others pizza providers need to be able to describe the goods that they are trying to sell. The distinctive aspect in the trademark “Pizza Hut” is the word “Hut”, since it has little to no association or relevance to the product being sold (i.e. pizza).

The next step up in terms of the strength of a trademark is the use of descriptive terms. Descriptive terms describe a characteristic, aspect, or quality of the goods/services that are being sold under the mark. From there, it goes to suggestive terms, like Coppertone®; suggestive marks do not tell the consumer what the product is or something about it, but is instead suggestive of a characteristic of the product. Next are arbitrary marks, which are more distinctive and thus stronger than descriptive or suggestive marks. An arbitrary mark, for example, Amazon®, is an established word that everyone knows has absolutely nothing to do with the product and/or service being offered under the mark. Taking something that has absolutely nothing to do with the product that is being sold and using it as a trademark will provide a distinct and relatively strong trademark.

Finally, the strongest trademarks are formed from fanciful terms. Fanciful marks are words that are made up and have no connotation associated with them prior to their use as a trademark. An example of a fanciful mark is Xerox®, which is a word that had no meaning before the Xerox company came into existence and started calling their products Xerox machines. The defending against trademark infringement starts with selecting a strong mark.

Once trademark rights have been established, it is important to monitor the market to ensure that no one else is selling related goods under a similar mark. If they are, then the owner of the trademark can assert their rights, usually starting with a cease and desist letter that demands that the company or person stop using the mark without a license or otherwise engage in settlement negotiations. If the cease and desist letter does not work, then the trademark owner could pursue litigation.

It should be noted that registering a trademark at the federal level will provide the trademark owner enhanced rights that are not afforded by common law. These registered rights become particularly relevant when trying to enforce or defend the use of a mark. One such benefit is the presumption of constructive nationwide use. Under common law, the trademark rights are limited to only the geographic area in which they are used. Federal registration provides constructive nationwide use, such that even if a company is only using their trademark in a limited area, the use of it in any other area within US jurisdiction could still be considered infringement.

In addition, federal registration affords the trademark owner the presumption of validity and ownership. If someone wants to assert common law trademark rights, then they must first prove that the mark is a valid trademark, and they are the owner of the trademark. Whereas, federal registration of a trademark provides a presumption that the trademark is valid and that they are its owner, shifting the burden of proof to the other party.

Furthermore, federally-registered trademarks can be recorded with the Office of Customs and Border Patrol, which allows the trademark owner to more easily enforce their domestic trademark rights at the border. This means that if a US trademark is being infringed in China the owner of the trademark could prevent importation of those goods to the US by having the shipment of the offending goods detained or confiscated by US customs.

Finally, the more someone can link their trademark to themselves as a provider of goods and/or services, the stronger that mark becomes and the savvier customers will be to third parties who attempt to encroach upon the trademark. If a trademark owner can educate their customers about the presence of counterfeit goods and teach consumers how to identify their products from knockoffs, they will be protecting their trademark without necessarily having to take the cease and desist or litigation route. A lot of fashion brands do this since it is an area rife with knockoffs.

For more information on Infringement Of Trademark & Patent Rights, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (512) 766-6082 today.