The basic procedure for establishing proprietary rights in a trademark used to identify goods is to first determine whether the mark is unique. Then, use the mark in commerce, providing notice of ownership rights in the mark. After the mark has been used in commerce, register the mark with the government and use it regularly while guarding against infringement.
Basic trademark procedure begins with the development of a unique mark. A mark can be a name, logo, symbol or other identifying device that is used to distinguish the goods of one business from the goods of others. No trademark rights can attach to a mark that infringes on an existing mark by being too similar to it. Before using a mark in commerce and risking liability for infringement, conduct a trademark search using Internet search engines, national trademark databases and local trademark registries.
Once confident that a mark is unique enough to trademark, use the mark in commerce. Automatic trademark rights, known as “common law” rights, vest in the owner and protect the mark as soon as it is used. That protection, however, extends only within the geographical area where the mark is being used. Using the mark on the Internet in conjunction with a website is an effective way to establish a presumptive right to national, and even international, protection.
Uniqueness, use and notice are the underpinnings of common law trademark procedure. Provide notice of rights in a mark by always using the ™ symbol with it. This prevents an infringing party from claiming innocence in a court proceeding to recover damages for the unauthorized use of a mark.
In many instances, these basic steps that provide common law protection are the extent of the ordinary trademark procedure that a business owner might want to pursue. Local, national and international trademark registrations are further options. Registration often provides the trademark owner with additional remedies, including a presumption of ownership, access to federal courts, statutory damages and punitive damages that can be as much as three times actual damages. The registration process can be quite expensive, however, require expert advice and take years to complete.
Though basic trademark procedure could stop at the establishment of common law rights, a business owner should think twice about eschewing official registration. With the globalization of economic markets and the transfer of information and intellectual property worldwide in a matter of seconds via the Internet, opportunities for business expansion and the potential for infringement abound. It often makes sense to secure as wide an application of rights as possible before those rights are needed, rather than to wait until the mark has been exposed in an area where rights are not protected and have to fight to recover the mark from a squatter. Once the mark is registered, append the ® symbol to it provide notice, use the mark regularly and be vigilant about infringement. Trademark registrations can be continually renewed as long as the mark remains in use and has not been homogenized by people co-opting the mark as a generic label for related types of products.
