Branding Your Company: The Protections of a Registered Trademark

Whether they realize it or not, most Americans are intimately familiar with dozens of registered trademarks. We wear Nike’s “swoosh” on our sneakers, gym shorts and hats. We drink from Coca-Cola’s legendary red can and drive by several golden arches on our way to and from work.

However, before these images became a marketer’s dream, each company protected its symbol, or “mark,” by registering it with the United States Patent and Trademark Office (USPTO). Although states (including California) afford trademarks certain protections without federal registration, the advantages of having federal protection are quite substantial.

Protections of a Trademark

According to the USPTO, a trademark is “a word, phrase, symbol, or design … that identifies and distinguishes the source of the goods of one party from those of others.”

Registering a trademark with the USPTO significantly heightens the protections a trademark receives, deters others from infringing upon it, and improves the remedies should trademark infringement occur. These remedies include the right to recover triple damages, being awarded attorney’s fees, and the automatic right for federal court jurisdiction. Other advantages include:

• Constructive notice to the public regarding ownership of the mark
• Legal presumption of ownership
• USPTO refusal to register a trademark it deems confusing or similar to one previously approved

Steps to USPTO Registration

Whenever a company creates a brand name or symbol, the goal is for the public to associate it with the company’s goods and services. In order to reach this goal, however, several important steps have to be followed:

• Provide the proper name and address of the applicant
• List the goods and services provided with the mark
• Evidence of actual use of the mark, the date of the first use, and the date of first use in interstate commerce
• Payment of registration fee
• Clear drawing and specimen of the trademark

It is essential to properly register a trademark. The protection afforded to trademarks is invaluable should someone use a brand name or symbol to promote another company’s products, register a similar domain name, or lure customers from one company to another. Contact a trademark attorney if you need help with registration or contesting improper use of a trademark.

Mark Wilson, a trial attorney, has won nearly every case he has tried or arbitrated. He lost only one jury trial and obtained a complete reversal on appeal. Mr. Wilson represents clients in business litigation and legal malpractice cases and was named in the 2017 – 2020 SuperLawyers Top 50 Orange County lists. Mr. Wilson is a California State Bar certified specialist in Legal Malpractice Law and can be reached at 949-239-0907; [email protected]; https://www.kleinandwilson.com