Tracy Jong at her desk

Trademarks: Do You Know Your Rights?

There are a lot of misconceptions surrounding the rights granted by a federally registered trademark. With evolving technology and the rapid exchange of information online, entrepreneurs are now forced to consider intellectual property at a much earlier stage of their business. While it is certainly easier to rely on the information you get from your uncle at Thanksgiving or the neighbor while out walking the dog, it doesn’t necessarily help when you are in the middle of a trademark dispute. It is important to have a complete understanding of your rights. We’ve got you covered. Let’s go over the basics.

“I researched a bit and went on USPTO and filed my trademark application in under a few hours. What is all the fuss about?”

The trademark process is a very complex endeavor. While anyone can easily file a trademark application, it is important to ensure it is positioned for success. The Examining Attorney can issue an Office Action that requires a complex legal response. These can be very difficult to overcome and sometimes result in the abandonment of the application if not handled correctly. It is important to consider all potential issues upfront to ensure the trademark proceeds to registration.

“I have a registered trademark for my business and another business started using the same name. Let’s send a cease and desist letter!”

Not so fast! While you are required to enforce your mark to preserve your rights, you can’t just send a cease and desist letter because another business is using the same words. The entire concept of trademark protection boils down to how the average consumer would perceive two marks, both when compared side by side and separately. There are many instances where two businesses who sell substantially different goods/services coexist with the same name. For example, Delta Airlines and Delta Dental coexist peacefully. The average consumer would understand that the services are provided by two different companies and their decision to make a purchase would not be influenced by the existence of the unrelated entity.

“So what is the point of a trademark if I can’t stop everyone from using my name?”

Trademark protection provides something better! While you can’t “own” the words, federally registering a trademark protects the relationship you have with your consumers. If a company selling related goods or services tries to use a confusingly similar name, you would be able to send them a cease and desist letter and enforce your rights. For example, if you have a dog toy company names “Puppy Extravaganza” you will likely be unsuccessful in your attempt to stop a company selling pretzels from using the same name (and that would be a bad name for a pretzel company!). However, you would be well within your rights if you sent a letter to a company selling cat treats or anything related to the products you distribute. You could even send a letter to a company using “Kitten Extravaganza” or “Extravaganza Puppy.”

“So sometimes I can protect my name and other times I can’t. This seems too complicated. I don’t need trademark protection because I have been using the name forever. I’ll just deal with issues as they come up.”

While that certainly works in some situations, it is generally not a great strategy. As long as your mark is registerable in the first place, you would have common law rights. However, if another business in a different geographic location proceeds with registering the mark first, you would be locked into your current location. Also, many individuals pursuing trademark protection will first conduct a search of currently registered marks. They will be less likely to infringe upon your mark if they know you exist. Registering a trademark helps. It pays to do your homework.

Tracy Jong Law Firm offers free initial consultations to businesses looking to develop a brand strategy. We know that it can be difficult with so many expenses that need to be juggled. Let us help you evaluate your risk and develop a strategy for success.