federal trademark registration

Building the Strength of Your Trademark

May 4, 2011

So, you can rest easy now that you have a federal trademark registration, right?  No! 

Federal trademark registrations provide many protections and advantages to trademark owners.  Nevertheless, even with federal trademark registrations in hand, trademark owners will benefit from active efforts to build and maintain the strength of their trademarks.

A trademark owner can lose trademark rights by not using the trademark, by not using the trademark correctly, by failing to enforce the trademark against third-party infringers and/or by failing to object to generic misuse of the trademark.  Ironically, in some instances trademarks can be become so famous (think, GOOGLE®, VELCRO® and STYROFOAM®) that trademark owners must switch gears from heavily promoting their trademarks to limiting how people use their trademarks.  Like failing to enforce a trademark against known infringers, improper use of a trademark by the public may diminish the trademark’s value. 

It is important to keep in mind that one major rule in using a trademark properly is to use the trademark as an adjective, not a noun or a verb.  In other words, the trademark is the brand name (an adjective) describing the associated goods or services. 

Trademarks can become generic if the public starts using the trademark to refer to what something is, rather than as a brand name.  Therefore, some trademark owners develop branding campaigns to educate consumers on how to properly use their marks.  For example, the companies behind the XEROX® and KLEENEX® trademarks have devoted considerable resources in such campaigns to keep these trademarks from becoming the generic nouns for photocopies and tissues.  A trademark owner is wise to monitor the trademark’s usage on the internet, in the media and in dictionaries, and should object to improper treatment, such as generic misuse, if necessary.        

With respect to enforcement of trademark rights against third-party infringers, trademark owners must act with reasonable diligence in enforcing their trademarks rights.  However, courts do recognize the expense and potential business considerations involved in bringing a trademark infringement lawsuit, and as such, a trademark need not be enforced against every nameless John Doe who misuses the mark through a random comment on Facebook.  On the other hand, if the trademark is not enforced against the owner’s arch nemesis who is stealing sales, there is a risk that the mark will be found to have lost strength, or worse, that the trademark has become abandoned and therefore completely unenforceable. 

Please contact is if you would like to learn more about recommended protection efforts for your trademark.


Could Your Business Benefit From a Federal Trademark Registration?

October 25, 2010

Trademarks are often the most valuable piece of a business’s intellectual property portfolio.  For example, consider the marketing value of the marks Coca-Cola® and the Nike swoosh.  The potential tremendous marketing value of trademarks combined with substantial legal benefits make obtaining a federal trademark registration a wise move for most businesses. 

A trademark can be any word, phrase, symbol, product shape, logo or other identifier which distinguishes a business’s goods and services from those made or sold by another.  Certain trademark rights attach when a business uses even an unregistered trademark to distinguish it’s goods or services.  However, those rights are generally limited in scope to the business’s geographic region such that any future expansive use of the trademark can be blocked by a later user of the trademark or even an applicant of a federal trademark registration who has an intent to use the mark in the United States.  In contrast, the federal trademark statute prescribes nationwide rights to federally registered trademark owners, allowing those trademark owners to enforce their trademark rights against any later user of the trademark and anywhere in the United States.  This effectively creates the opportunity for relatively unfettered future expansive use of the trademark.

Additional benefits of federal trademark registrations include increased damage awards for willful infringement of registered trademarks, constructive notice to all competitors that the owner of the trademark has the right to use the mark throughout the United States, access to federal courts for litigation involving federally registered trademarks, and the right to use the symbol ®, which can deter potential infringers. 

Attorneys at Woodard, Emhardt have extensive experience helping both large and small businesses secure and protect their trademark rights.  Please contact us for more information on the benefits of federal trademark registrations and how you can obtain them.