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ResultsKatalyst Newsletter - ResultsKatalyst September 2007

Robert ShowersWhy Register a Service Mark or a Trademark?

Maximizing Your Website: September 2007
H. Robert Showers, Jr.
Principal Partner, Simms Showers, LLP

Whether a non-profit or a for-profit organization, the grief and aggravation that come when another entity adopts its trademark or service in connection with the same or similar goods or services is the same. Organizations spend large sums of money to create logos and marketing plans to come up with a mark in which they will use as their brand or source identifier in the marketplace. If another organization begins using the same or similar mark with the same services in the same field, then your investment and goodwill associated with the mark will be severely diminished. The confusion generated can cause great damage to your organization’s goodwill and can cost thousands to resolve.

To review, a trademark or service mark is a source identifier or brand that acts to distinguish the source of goods or services from another. The terms "trademark" and “service mark” are often used interchangeably, and technically the term “trademark” is used to refer to goods/products, whereas the term “service mark” refers to services.

A mark can consist of a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs.

Trademark rights accrue the very first time a mark is used on a good or in connection with a service. These rights can then be enforced to prevent others from using the same or similar mark in connection with the same or similar goods or services that you offer.

Under U.S. Trademark Law, while registration with the U.S. Patent & Trademark Office is not required to establish trademark rights in a mark, owning a federal trademark registration provides many important legal advantages, among which are:

  • Nationwide constructive notice that the registrant is the exclusive owner of the mark
  • Evidence that owner can use the mark exclusively nationwide and that the mark does not conflict with other’s rights
  • Evidence that the mark is protectable, and not generic or merely descriptive
  • Federal court jurisdiction can be invoked
  • Availability of increased statutory damages, punitive damages, and attorneys fees in an infringement action
  • Registration can be used as a basis for obtaining registration in foreign countries
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods
  • Registration becomes incontestable after 5 years of continuous use in commerce, which means the registration cannot be easily cancelled

If a mark is not registered, protection rights in the mark are covered under common law. In a common law action, there are no presumptions, and the entire burden of proving ownership and infringement rests on the complainant. Having to prove those standards can be costly and can result in much longer delays than if the complainant had a federal registration. Without a federal registration, damages in an infringement action are limited to only those that can be proven. With a registration, punitive damages and attorneys fees are available and this gives the owner a much stronger "hammer" to get infringers to cease use of the mark. If they continue to use the mark after being warned, with a federal registration, that continued use can cost them a hefty amount in punitive damages and attorney’s fees.

The simple filing of an application with the U.S. Trademark Office provides certain benefits.

The simple filing of an application with the U.S. Trademark Office provides certain benefits. Once a mark is filed, the public has immediate constructive notice of the trademark ownership claim and the mark would show up in all trademark searches, which can deter others from using the same or similar mark in the same category of goods or services. Use by another party of the same or similar mark after the filing date is actionable. If a third party used and filed an application after that date, the third-party’s application would be refused registration by the U.S. Trademark Office.

Not having a federal registration can also be detrimental to protecting domain names and web sites, as most domain name dispute arbitrators and web hosting companies require proof of trademark registration and rights, and if an organization cannot produce a U.S. (or foreign) trademark registration, many will not provide a remedy.

In sum, because a federal registration offers so many important procedural, evidentiary and monetary advantages, including a lesser burden of proof of ownership and validity, increased damages for infringement, and a basis for foreign registration, we recommend that all organizations federally register their marks in whatever classes that are appropriate to safeguard their intellectual property rights.

For more information on registering a service mark, trademark or copyright, call Simms Showers LLP at 703-771-4671.

© Robert Showers 2002, 2007

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Robert Showers, principal partner, Simms Showers, LLP, focuses his practice on civil and commercial litigation and nonprofit, tax exempt and business law. He regularly handles lawsuits and claims against nonprofits and small businesses and advises them on corporate, risk management, tax-exempt and employment issues. Robert Showers has more than 25 years practicing law, lectures extensively nationwide and has written articles on church and non-profit law, sexual misconduct, and child sexual exploitation.

 

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