Creating and Protecting Trademarks

I’ve previously discussed many times what trademarks — which also include service marks (marks that identify a service rather than a product) and trade dress (the packaging or look of a product or service — think of the design, colors, and even uniforms, in every McDonald’s restaurant) — do. Although they are a right held by a person or entity engaging in commerce, they are intended to prevent confusion in consumers as to the source of a product or service. The Ford trademark is helpful because it lets you know that an automobile is manufactured by Ford Motor Company, and not another auto manufacturer. Therefore, one of the primary questions in any case of trademark infringement is whether any similarity in marks causes confusions for consumers — if a consumer is likely to believe that a product or service bearing a mark similar to a prior mark actually comes from the company that owns that prior mark, there is likely trademark infringement. It is important to again note that registration is not necessary for trademark ownership — a trademark is established by using the mark in commerce. Even without a registration, a company can assert legal rights to a trademark it uses. But registration offers several benefits, including access to the federal courts to assert a trademark infringement claim, statutory and other damages (rather than simply actual damages), nationwide ownership of the mark (rather than just the geographic area where the mark is used), notice to others of your ownership of the mark, and, after certain conditions are met, the incontestability of a mark. I’m sometimes asked what makes a good trademark. Made-up, nonsensical terms make the strongest trademarks — no one else is likely using a term that you’ve made up. Descriptive, generic terms make the weakest trademarks, and if they are too generic, may not be eligible for trademark protection at all. Calling your computer repair company “Fast Computer Repair” may not be eligible for trademark protection, since it merely describes the service. Like with all other forms of intellectual property, if a trademark holder does not take active steps to protect its mark, it may lose its protection. Trademark registration requires subsequent filings for a period after the initial registration to inform the Trademark Office that a mark is still in use. If a registered trademark holder fails to do that, or enforce its mark against other similar or confusing marks, it may lose the money and effort it has spent obtaining a trademark and registering it.

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