Tuesday, June 8, 2010
Trademark Yourself Part II
Picking up where our May/June article left off, DPP delves into acquiring, registering and protecting your business trademark
In the first part of this article, which you can find on the DPP website, www.digitalphotopro.com, we addressed some of the key reasons why a photographer should make use of trademarks and how to use and clear that trademark. In this conclusion, we’ll go over how to acquire your trademark and the registration process.
Acquiring Trademark Rights And Deciding Whether To Register
Trademark law varies from country to country. While trademark rights may be acquired through mere registration in some countries, the United States takes a different approach in that trademark rights are generally acquired only through use. In fact, since “common-law” rights arise from the proper use of a trademark, many businesses end up acquiring rights in a trademark without even realizing that they have done so.
Wedding photographer Shannon Norton, owner of the Lehi, Utah-based studio Model Bride Photography, discovered that she had acquired common-law rights after receiving a call from the owner of the trademark “MODELBRIDE” demanding that Norton rename her business. “The owner [of MODELBRIDE] wanted to be the only website to come up when someone performed a Google search,” says Norton. Ultimately, Norton was able to establish that she had common-law trademark rights, which effectively ended the confrontation.
While common-law rights may be sufficient for some, there are several significant advantages to obtaining a federal registration. These advantages include the following.
• Presumptions. Since federally registered trademarks go through an examination process, a trademark registration carries with it certain presumptions, including the presumption that the trademark has acquired secondary meaning (which means that it’s able to identify a given source of goods or services). These presumptions become particularly important when you seek to enforce your trademark rights. For example, with the presumption of secondary meaning, a trademark owner bears the burden of proving that his or her trademark has secondary meaning (the cost of proving secondary meaning far outweighs the cost of registration and related maintenance fees that must be paid for a federally registered trademark).
• Constructive Notice. A federal trademark registration provides constructive notice to anyone else anywhere in the country seeking to use the same or confusingly similar trademark. As a related benefit, registered trademarks are included in the database used by trademark examiners when considering new trademark applications to determine if the new trademark is confusingly similar to any existing trademarks.
• Remedies. The owner of a federally registered trademark may also recover greater damages in an action for infringement (which can be as much as three times the infringer’s profits or damages).
• The Right To Use The Registration Symbol. Only owners of federally registered trademarks are permitted to use the registration symbol (®) with their trademarks.
There’s one partial exception to the general rule that U.S. trademark rights are acquired through use, and that is what’s referred to as an “intent to use” (ITU) trademark application. The ITU application affords a business that has a good-faith intent to begin using a trademark the opportunity to formally clear the mark for registration and to establish priority over those who would seek to later adopt the same or a confusingly similar mark. Ultimately, however, the ITU application still requires proof of actual use of the trademark before the USPTO will issue a trademark registration.
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