As a business, your brand is one of your most important assets. The customer goodwill you earned by providing great products or services is what distinguishes you from your competition. Ensuring you “own” the intellectual property associated with your business through trademarks is one of the best ways to protect your brand and ensure customers know that they are getting the same great service you’ve provided to all the customers before them.

Your trademark is your way of letting current and future customers know that the service they get comes from you—the trusted source. A trademark is any word, phrase, symbol, design or other mark that identifies and distinguishes your product or service from others. It protects potential customer from being confused that another product or service came from you. Protecting the integrity of your trademark means protecting your customers from being deceived.

Trademarks And Your Rights

Of course, you cannot just proclaim “I own this trademark” and think you can stop everyone else from using a similar mark. There are some marks you simply cannot “own.” Generally, you cannot own a mark that only describes your goods or services: for example, you cannot own “Pizza Delivery” for a pizza delivery business. You also generally have to have actually used your mark in commerce to distinguish your goods or services from others. Most importantly, you cannot own rights in a trademark that was owned by someone else before your if your use of the mark is likely to cause the prior user’s customers to get confused as to your affiliation with the prior user.

The scope or extent of your trademark rights also depends on a number of other factors. The United States Patent and Trademark Office (“USPTO”) registers qualifying trademarks, and such registration grants the owner a number of rights and benefits including preventing anyone in the entire United States from using a confusingly similar mark. USPTO registration is not mandatory, however. You obtain trademark rights under common law as soon as you use your mark in commerce. Common law protection is limited to the geographic area in which you do business, so interstate businesses are best to obtain USPTO registration. States also provide registration with associated benefits. Generally, state registration prevents anyone in the state from using a confusingly similar mark.

Once someone obtains trademark rights, it is up to them to enforce those rights by preventing others from using confusingly similar marks in a way that could cause consumers to be confused as to the source of the associated goods or services. The unlawful use of a trademark of another is called trademark infringement. If someone is unlawfully using your trademark, it is your duty to prevent them from doing so by sending them a cease and desist letter and, if necessary, initiating a legal action against them. Damages for trademark infringement can include a court ordering an infringer to disgorge (to pay to the trademark owner) the profits the infringer made as a result of the infringement. The court can do other things like order an infringer to stop “infringing conduct” even before the case is over. This can cause a business to stop in its tracks and is a serious matter.

The nuances of trademark law and infringement are highly factual. Whether someone can obtain a trademark, whether a use is infringing, and whether infringing use is justified depends on the specific facts and circumstances in each case. Trademark law and the First Amendment often overlap as well, making trademark disputes highly complex. A skilled trademark lawyer is highly necessary in these situations.

Ortiz Law provides trademark consultation, registration, and dispute resolution services. Feel free to contact us today for a free consultation.

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