How Trademarks Work

by Joe Stone

Any unique symbol, logo, word or phrase used to distinguish your business's services or products is a mark. Your trademark rights are created when you start using the mark in commerce, and include the right to exclusively use the mark and prevent others from using it. Trademark rights are valuable property rights that you can further protect by registering your mark with the state and federal government, as well as by diligently stopping others from infringing on your mark.

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Establishing Trademark Rights

Registering your mark helps protect your trademark rights, but registration is not necessary to create them. Using your mark in conjunction with selling your products or services to the public is the only requirement to establish trademark rights. However, such rights will only be as broad as the geographical area in which you do business using the mark. For example, if your business is limited to the state of New York, another business that is limited to California can use the same mark there.

Registering a Mark

The U.S. Patent and Trademark Office and all state governments permit the registration of a mark. By registering your mark, you are notifying the public that you claim the exclusive right to use the mark. By registering with the USPTO, you also acquire additional rights, such as the right to sue in federal court for trademark infringement. In many successful infringement lawsuits, federal law permits you to recover triple the amount of monetary damages caused to you by the infringement and recover your attorney's fees.

Duration of Trademark Rights

Your trademark rights continue for as long as you are using the mark. However, your trademark rights may be considered abandoned if you stop using the mark for a period of time. As a general rule, a mark that is not used for three consecutive years is likely to be deemed abandoned if the issue is raised in court. Also, for federally registered marks, you must make periodic filings with the USPTO to keep the registration active. Between the fifth and sixth year after registration, a declaration that you are using the mark must be filed with the USPTO. Between the ninth and tenth anniversary of registration, the same declaration must be filed along with a renewal application. The declaration and application must be filed between every ninth and tenth anniversary thereafter.

Protecting Trademark Rights

In addition to continually using your mark to keep it active, you must also protect your mark from infringement or dilution. A mark is infringed when the same mark, or a deceptively similar mark, is used by a competing business, causing confusion in the marketplace. If you fail to take action to stop the infringement, such as sending a cease and desist letter or filling a lawsuit, you may be found to have waived your right to enforce your trademark rights in future infringement situations. Owners of a famous mark, such as Xerox or Kodak, may file a lawsuit to prevent dilution of their mark if another business uses the same or similar mark. In dilution cases, there is no need to prove the use of the mark creates confusion in the marketplace, just that the other business is using the mark.