The key reason for creating a trademark is to have a product or service that stands out in the marketplace, making it unique enough for identification by consumers. If this is done correctly, then the trademark accumulates what is known as goodwill (value of the trademark). In most cases, if not all cases, this translates into major economic benefits for its owners, be it an individual owner or a corporate entity owner. In this article, we will go over the nuances of trademark protection.

To enjoy the ultimate benefit from a trademark, the process of protection must be intentional. The common law trademark rights (automatic rights acquired by use in commerce), even though recognized in the United States, are not without limitations. For instance, it is limited to the geographical area where the trademark is in use and only enforceable in state courts.  

Distinctiveness of a Trademark

When creating a ‘winning’ trademark, distinctiveness must be at the back of the creative’s mind.

Distinctiveness is characterized by using either invented words, phrases or logos; fanciful words, phrases or logos; arbitrary words or phrases; or suggestive words or phrases. Suggestive words should not expressly state the quality of the products or services but can actually give an incline to their quality. Generic or descriptive words that point to the purpose of the product or services should be avoided.

It is important to also check if the chosen trademark has a different meaning in a foreign language.

Registration of a Trademark

Registration at the United States Patents and Trademarks Office (USPTO) grants federal protection and the legal presumption of ownership. The implication of this is that the owner of a registered trademark can go after any infringer within the United States and be successful in most cases.

You can after registration legitimately use the federal registered trademark symbol ®️ to show the trademark is registered and to deter infringers. This symbol should only be used with a trademark registered with the USPTO. The trademark symbol ™️ can be used as soon as a trademark is created by the owner. Using the ™️ symbol puts the public on notice of the owners’ intent to protect their trademark.

Trademark is territorial. This means that if you intend to or do business in a country other than the United States, then you will need to register your trademark in those countries to be protected. This is necessary if your products are marketed on the internet and sold to consumers in other countries.  

Use and Non-Use of a Trademark

The use of a trademark is a prerequisite to registration and the registration of a trademark can be canceled for non-use. Therefore, to keep the registration status of a trademark, it has to be in continuous use. 

Maintenance of a Trademark 

The owner of a trademark has the responsibility to keep the registration alive by renewing it at the appropriate time. 

Fifth and Sixth years

A declaration of use and/or excusable non-use must be filed between the fifth and sixth years after the date of registration. 

Ninth and tenth years

Then, a declaration of use and/or excusable non-use and a renewal application must be filed between the ninth and tenth years after the date of registration. 

Every ten years

After which the declaration of use and/or excusable non-use and a renewal application must be filed every ten years.

Trademark Watch and Monitoring

To have strong trademark protection that guarantees economic benefit by countering every form of infringement, a trademark owner must commit to adequate trademark watch and monitoring. This is to identify and promptly act against infringers.

Strong trademark protection is synonymous with maximum economic benefits and the need for it cannot be overemphasized. A trademark is an important asset to a business and owners should ensure that this asset is adequately protected to be valuable. A strong trademark makes a business highly competitive and profitable, and it is the best way to avoid trademark infringement.