Steps to Establishing an Identity in the Marketplace

Winter 1999

Every day we are fortunate that we are able to witness the birth of new companies with new products and services entering our global marketplace. Whether you fit into one of these categories, or not, every business markets its products and services which in turn establishes the business's reputation and builds goodwill for that business. Protecting a name, logo and/or image associated with a business's products and/or services is critical if a business wants to protect and enhance the goodwill and value of the business. The following are some basic steps we recommend for properly establishing, maintaining, and/or attempting to maximize the value of one's products and/or service through the use of trademarks and/or service marks. Please be advised that there are many pitfalls that you may encounter during the process of acquiring a trademark registration. There are exceptions to practically every rule and legal questions which may expand or contract the rights you acquire in your mark. You should consult a licensed attorney prior to undertaking the trademark registration process.

  1. If possible, prior to selecting a name or logo for a product or service, it is recommended that you have a trademark search conducted to determine the availability of the mark you are considering. The search should include a review of all similar or related federal, state and common law marks to increase the likelihood that you can acquire exclusive rights to the mark. If of course you already are using the mark, searching available records is still recommended so that you will be fully informed of possible competing businesses as well as potential obstacles to acquiring a registration or fully developing the goodwill associated with the mark.

  2. Following the search, it is recommended that you have the results of the search reviewed by legal counsel experienced in trademark law to assist you with evaluating the results and providing counseling on how to proceed in view of the search results. Based upon the results of this review and the business strategy you intend on employing, it generally is advisable that you have a trademark application prepared and filed with the U.S. Patent and Trademark Office, and/or state and foreign governments.

  3. Prior to receiving a federal trademark registration, anytime a mark is used in commerce to represent your goods and/or services, you should place a "™" adjacent to the mark. This symbol notifies the public of your intention to obtain and/or enforce your rights in the mark for the applicable goods and/or services. At such time as you receive a federal trademark registration from the U.S. Patent and Trademark Office, you replace the "™" symbol with a ® so as to place all members of the public on notice of your federal trademark registration.(1)

  4. Once you have received your federal trademark registration, it is important to maintain your rights in the mark as long as you continue to use the mark in its registered form. Such steps may include timely filing all affidavits and renewal requests with the U.S. Patent and Trademark Office, vigilant enforcement of your trademark against infringing parties, and monitoring the use of your registered mark by any parties licensed to use it. For a nominal fee, the law firm representing you in the trademark process will often provide the docketing of deadlines for trademark renewals or filing of required papers, however, this service may not be required if you are relatively certain that you will not overlook these deadlines as doing so may result in the cancellation of your registration.

  5. We further distinguish the policing of your mark and how your mark is used as such action may likely lead to litigation or other legal proceedings and warrant further discussion. Preventing others from using your mark or "confusingly similar" marks on the same or similar products and/or services is critical if you are to retain the rights provided under trademark law. This includes any rights you may have under federal, state and common law. Although at this point you may have a federal trademark registration, the value of your mark and your goodwill may be subject to some form of "dilution" if "confusingly similar" marks are permitted to co-exist, whether by usage or registration. Furthermore, intentional neglect in enforcing your rights may be considered a waiver of your rights under certain circumstances. Therefor, although lack of enforcement may not jeopardize your right to use the mark, your ability to prevent others from using the mark will be greatly diminished as will the goodwill you may have generated in the mark. Accordingly, it is recommended that you monitor all marks being filed at the U.S. Patent and Trademark Office, as well as all similar marks being used on competing products and/or services and advise your legal counsel at such time as you discover a potentially infringing use of your mark by others. Often your legal counsel will be able to provide the monitoring services for you at minimal cost.

Summary of Steps

Footnotes

  1. As a U.S. registration is only valid in the United States of America, businesses providing goods and services in foreign countries often continue to use "™" when displaying their trademarks in those countries since until such time as they have acquired a registration in those countries they may be falsely advertising their mark as a registered mark in those countries. As the extent of liability in such a case is uncertain, you should consult your attorney to determine the extent of your exposure.