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Costly Misconceptions About Trademarks
Michael J Foycik Jr
by Michael J Foycik Jr.
June 8, 2013

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

Getting a trademark is a great idea, but things may not be that simple.  There are some misconceptions that can cost time, money, or even loss of rights. 

One common misconception is that a registered trademark is necessary to have enforceable trademark rights.  We are all familiar with registered trademarks – the kind with the ® registration symbol.  But, trademark rights normally arise from actual use, even for unregistered trademarks.  State courts can enforce such rights arising from actual use, even in the absence of a federally registered trademark.  No registration, no problem – sometimes.

Getting a registered trademark requires filing a trademark application.  Choices need to be made right at the start: actual use or intent-to-use; type of goods/services; logo or word mark.  These choices can have profound consequences.  Even the U.S. Trademark Office recommends having an experienced trademark attorney help with those choices – you'll see the warning for that in the online trademark  application filing forms and elsewhere.

Actual use sounds better than intent-to-use.  Maybe so - unless there is a conflict with another trademark filed on an intent-to-use basis.  Then, surprisingly, the owner of the intent-to-use to application is permitted to introduce evidence of events that show an intent-to-use that has occurred before the application's filing date.  The actual-use applicant does not have the same rights.  Such evidence of intent-to-use can be scant: a mere mention at a business meeting, or an order for design of the mark, for example.  This is peculiar to federal trademarks; state courts can apply their own standards and might well decide specific cases differently. 

Choice of goods/services is important: more is better, right?  Not so fast.  Listing multiple catergories is all good and well, until you have to prove actual sales.  Sure, a Statement of Use might work with the U.S. Trademark Office, but at a cost: forfeiture of rights if untrue.  When it comes time to enforce your trademark rights against an infringer, it may become necessary to have proof of use in specific categories of goods.  Listing a few categories of goods is fine, and once you get your trademark registered your future use in other categories will allow you to file further trademark applications for those additional uses. 

Logos are great: typically a logo is a design plus words.  Better than just the plain words, right?  Not exactly.  A plain, ordinary word mark – once registered – covers variations and logos, and sometimes can even cover translations into other languages.  But, again, things are not always simple.  A complex logo might be registrable when the word mark by itself would not be registrable, but those situations do not seem to be very common.  The word mark is a very good way to go.

Another misconception: suing an infringer is worthwhile.  Sometimes it is, when the infringer is cutting into your business and the only remedy you seek is for that infringer to stop.  But, if you're expecting a big damage award, don't count on it.  Typical remedies, absent a showing of willful intent to misappropriate the trademark, typically only require the infringer to wind down use of the mark, and eventually to cease use of the mark; but no money damages.  Of course, willful intent changes everything, and that is why big damage awards might occur when a small company misappropriates a famous trademark.  Willful intent can be hard to prove in court. 

Have a trademark question?  Talk to an attorney experienced with trademark law and practice.  The cost can be modest compared to the benefits. 

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
 
 
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