Trademarks and services marks, sometimes called marks, can consist of words, names, symbols, designs, slogans, shapes, sounds or smells that are used to identify the source and quality of goods or services. Marks help consumers quickly identify and distinguish the goods or services offered by your business from the goods and services offered by other businesses.
Trademark rights in the United States arise from using the mark in commerce. While a trademark does not need to be registered, there are many benefits to registration including: putting others on notice of your business’ mark so they do not use a similar one, recording your registered trademark with the U.S. Customs and Border Protection to stop infringing goods from being imported into the US, obtaining access to the federal courts and certain types of monetary damages, and providing a basis for foreign registration allowing for protection of your company’s brand globally. If your business continues to use its federally registered mark in commerce for a period of 5 years after it has been registered, your business may also be permitted to file for “incontestable” status of the mark, which provides many benefits should your company become engaged in a trademark dispute.
Trademark rights can be lost, even when a mark is federally registered. One way to lose these rights is to permit others to infringe upon your business’ mark. As the owner of the mark, your business is responsible for protecting and enforcing its mark, not the US Patent and Trademark Office (the USPTO). Determining whether your business’ mark has been infringed upon usually requires a detailed analysis of the law and facts, which an attorney can provide. The hallmark of this analysis is whether consumers are confused by the parties’ simultaneous use of the mark in commerce.
Once it is determined that infringement has occurred, there are several routes your business can take to protect its trademark rights including sending a cease and desist letter, commencing a lawsuit, participating in proceedings before the USPTO, coordinating the enforcement of your rights with the United States Customs and Border Protection, issuing take down-notices, and filing a Uniform Domain Name Dispute Resolution Policy complaint.
The way in which your company’s trademark is being used by others, as well as your own preferences, will determine the appropriate course of action.
For more information on our Trademark Enforcement services, or to speak with an experienced NYC Trademark Enforcement attorney Contact Us