Effective branding strategies give trademark, service mark, logo, brand, and trade dress owners the ability to differentiate between products and services in the marketplace and prevent similar use by competitors.  In addition, a strong trademark also serves as a safeguard for consumers and helps to maintain product or service integrity by allowing consumers to associate a name with the quality of the products they purchase.  As a result, strong brand recognition in the marketplace helps to build goodwill in the business.

To receive protection under U.S. trademark laws, a word or symbol must be distinctive and must be used in the marketplace so that it gains recognition with the public.  The mark need not be registered to have certain rights under U.S. trademark laws.  Most marks, registered or common law marks, are afforded rights as soon as the mark is used commercially in conjunction with certain goods or services. U.S. trademark laws afford such marks protection so as long as the mark remains in use in commerce and is distinctive. As such, it is advisable to seek counsel from an intellectual property (IP) attorney regarding what uses fall under the purview of “commercial use” and whether a mark is distinctive under U.S. trademark laws. If the use is in a foreign country, it is advisable to seek counsel on these and other issues as required by foreign trademark laws.

Common law rights can be adequate to prevent others from using similar marks when consumers may be deceived as to source or sponsorship of goods or services. Typically, however, trademark laws afford limited protection to common law marks and generally limit protection to the particular geographical location in which the mark is being used.  An IP attorney could provide advice on how to protect common law marks through proper notice practices and enforcement strategies.

Under U.S. trademark laws, a federal trademark registration with the U.S. Patent and Trademark Office (USPTO) essentially gives constructive notice to the public of the registrant’s claim of ownership of the mark, as well as a legal presumption of ownership.  Once the mark is registered, trademark laws award the mark’s owner an exclusive right to use the mark nationwide in connection with the goods or services listed in the registration.  In addition, some foreign trademark laws allow the use of the U.S. trademark registration as a basis to obtain registration in those respective foreign countries.  U.S. trademark laws also provide the ability to the registrant to bring an action concerning the mark in U.S. federal court.

Once the mark is registered with the USPTO, trademark laws in the U.S. require that an owner adhere to certain usage requirements and notice practices.  For example, trademark laws require the trademark owner to adhere to the classification of goods and services listed in the registration and accordingly use the ® symbol in connection with the mark to alert others of its federal registration.  It is advisable to seek counsel from an IP attorney on the proper usage of the registered trademark and the proper notices required for such registered marks under such trademark laws. 

A registered trademark owner could also seek protection to guard against counterfeiters from using their marks on unauthorized products under trademark laws.  For example, a trademark attorney could help clients record the trademark registration with the U.S. Customs Service.  In doing so, the mark owner provides U.S. Customs officials with information about the brand to prevent counterfeits from making their way into the U.S.  An IP attorney could provide advice on procedures on how to record and seek enforcement of the trademark registration with the U.S. Customs, and similar procedures and trademark laws in other countries.

If you would like to know more about U.S. and foreign trademark laws, please contact a Dallas trademark attorney.