Before the U.S. Patent and Trademark Office (USPTO) was founded, companies already had rights to their trademarks and service marks. These rights are established in common law and arise from the actual use of the mark. You still don’t have to register a trademark in order to protect it from others’ use, but there are some advantages.
Before we cover them, let’s go over some basics about trademarks. A trademark is a name, symbol or other device, or a combination of those, that is used or intended to be used to identify and distinguish one company’s goods from others’. A service mark is the same thing but for services, although many people don’t make a distinction and use the term “trademark” to mean both trademarks and service marks.
Consider this trademark strategy
Think of a brand you know well. We’ll choose the United Parcel Service (UPS) as an example. This 2014 UPS trademark guidelines document identifies dozens of trademarks that the company has registered and intends to protect from infringement or misuse. They range from the word “brown” used in conjunction with shipping to their phone number (1-800-PICK-UPS®) to the names of their products and services. They also include trademarked slogans, such as “Big Or Small We Ship It All®” and “Synchronizing the World of Commerce®.”
UPS has gone to some trouble to protect even its most insignificant trademarks. The document includes usage guidelines for the media that explain how these trademarks are to be displayed and used. It also gives third parties the contact information for how to obtain UPS logos, photos and other assets for appropriate use. It even explains how the marks are to be displayed in foreign jurisdictions where they have not been registered.
What does registering a trademark do?
As you can see from the UPS guidelines, that company has actively registered a wide range of trademarks — but it has also undertaken a trademark strategy. In this case, the company has made materials available giving notice of the marks and prescribing their proper use.
Registering trademarks is useful for a number of reasons, but one of them is to give notice that a particular item is trademarked. In the case of registration, this notice is called “constructive notice” because competitors may not actually know about the trademark but are expected to check the USPTO’s Trademark Electronic Search System (TESS) before adopting a mark as their own.
Registering your trademarks also provides strong evidence that you own the marks and intend to protect them. This can have a deterrent effect on potential infringers. It also gives you the right to invoke the jurisdiction of the federal courts. You can even file your registration with U.S. Customs and Border Protection to prevent infringing goods from being imported into the U.S. Finally, U.S. registration can make it easier to register your trademarks abroad.
Your registration needs to be completed before you can use the symbol of an ‘R’ enclosed in a circle. This is the federal registration symbol, and you should not use it on pending registrations. There are no federal rules on using the designation “TM” or “SM,” but there may be local, state or international rules you should be aware of.
Registering a trademark doesn’t require an attorney, but hiring one has advantages. Your intellectual property attorney knows how to comply with the procedural rules and other requirements of the Trademark Act and the Trademark Rules of Practice so that your registration is approved the first time. Your attorney can also help you with an overall intellectual property protection plan.