To receive trademark protection in the U.S., a word or symbol must be distinctive and must be used in the marketplace so that it gains recognition with the public.  The mark need not be registered to have some degree of trademark protection.  Most marks, registered or common law marks, are afforded trademark protection as soon as the mark is used commercially in conjunction with certain goods or services.

 

U.S. trademark protection is afforded to a mark as long as the mark remains in use in commerce and is distinctive. As such, it is advisable to seek counsel from an intellectual property (IP) attorney regarding what uses fall under the purview of “commercial use” and whether a mark is distinctive under U.S. trademark laws. If the use is in a foreign country, it is advisable to seek counsel on foreign trademark protection and related issues required by that particular foreign country.

 

Common law trademark protection can be adequate to prevent others from using similar marks when consumers may be deceived as to source or sponsorship of goods or services. Typically, however, common law marks are afforded limited trademark protection and is generally limited to the particular geographical location in which the mark is being used.  An IP attorney could provide advice on how to protect common law marks through proper notice practices and enforcement strategies.

 

Once a mark is registered with the U.S. Patent and Trademark Office (USPTO), the mark essentially gives constructive notice to the public of the registrant’s claim of ownership of the mark, as well as a legal presumption of ownership.  Once the mark is registered, the mark owner gains exclusive trademark protection and has nationwide rights in connection with the goods or services listed in the registration.  In addition, to receive foreign trademark protection, some countries allow the use of the U.S. trademark registration as a basis to obtain registration in those respective foreign countries.  U.S. trademark protection also provides the ability to the registrant to bring an action concerning the mark in U.S. federal court.

 

Once the mark is registered with the USPTO, trademark protection in the U.S. requires that an owner adhere to certain usage requirements and notice practices.  For example, to maintain trademark protection, the mark’s owner is required to adhere to the classification of goods and services listed in the registration and accordingly use the ® symbol in connection with the mark to alert others of its federal registration and maintain trademark protection over the registered mark.  It is advisable to seek counsel from an IP attorney on the proper usage of the registered trademark and the proper notices required for such registered marks.

 

A registered mark owner could also seek trademark protection with the U.S. Customs Service to guard against counterfeiters from using their marks on unauthorized products under trademark laws.  For example, an IP attorney could help clients record the trademark registration with U.S. Customs.  In doing so, the mark owner provides U.S. Customs officials with information about the brand to prevent counterfeits from making their way into the U.S. An IP attorney could provide advice on procedures on how to record and seek trademark protection with U.S. Customs, and similar procedures and trademark laws in other countries.

 

If you would like to know more about U.S. and foreign trademark protection, please contact a Dallas trademark attorney.