Trademark protection

Mark Phillip Walters

I'll assume when you say "trademarked" you are talking about registration, either under federal or state law. First, it should be clarified that one does not need to register their mark in order to obtain common law, or even federal trademark rights. In the United States, rights in a trademark are established by use. Trademark use occurs when you adopt a word, phrase, drawing, picture, or just about anything, and use it to identify your goods or services. The dangers of not going through the registration process are that you will not obtain the benefits of certain statutory rights and privileges that come with registration, these are especially handy of you find yourself in litigation. Further, going through the registration process and consulting a lawyer will help you understand if your mark is protectable, i.e., not too descriptive or even generic of your particular goods or services. You should also conduct some kind of search before you adopt a trademark. This may save you the headache caused by later discovery of someone else using your trademark but having prior rights. It will do you no good to adopt a mark and invest in branding only to switch a couple years later because you are facing an infringement lawsuit. I can't overemphasize the need to search prior to adopting a mark and to obtain competent legal advice with respect to any similar marks that you find in your search. Of course, the more arbitrary the mark (i.e., less generic or descriptive of your goods or services), the less likely you are to run into a problem. (think "Holey Cow Carpets." Cows have nothing to do with carpets, so the mark is completely arbitrary. Now think "Seattle Clean Carpets." Your get the idea.) Also, these marks are often inherently distinctive, and therefore easier to enforce in litigation, and ultimately, more valuable to your company.

Jason Adam Dickstein

Mark Phillip Walters' answer was an excellent one. To clarify, though, an important advantage to federal registration of your trademark is the ability to obtain certain types of remedies. Under federal law, pre-registration infringements can usually only be remedied through injunctive relief (the court orders the infringer to stop). But if you have registered your trademark then you may seek money damages and possibly even attorneys fees in some cases.

Successful registration also serves as good evidence of your use of the mark, in the event of an infringement.

Thus, the "danger" of failure to register your trademark is that you may be limiting your remedies in the event of an infringement of your mark.

Phillip Gustavo Day

My colleagues have answered your question very well so there isn't much more to say other than trademarking your logo is a smart idea. Having said that, the real question that is probably going on in your mind is "i'd like to trademark my logo but is it worth it considering the cost". Many new business owners have a lot of start up costs and legal is the last thing they want to think about. Branding is one of those areas that law and business conflict because from a legal perspective, a lawyer wants to see a client with a mark/logo that is fanciful such that no one in the world has every thought about such a creative looking name and concept. Much easier to register and the client is happy. However, on the other end of the spectrum, you have a client that is selling washington state apples and what better name than "The Best Washington Apples". The name says it all... and a customer will know immediately what he is getting...great apples. Little marketing dollars needed to educate the client on what the product is and this is good...high profits. From a legal perspective this will never get registered because the trademark is generic. The point is most business owners, especially startups, don't consider the ramifications of their trademarks until it is too late. A generic name means anyone can use it and you have no protectable rights. Imagine when the first Xerox machine came out many moons ago. Think of the salesmen trying to sell these overpriced copiers and the amount of educating the consumer what a xerox machine was?! Most people probably looked at the salesmen with 4 eyes and asked what is a xerox? Some kind of disease? Seems funny now but the value of the trademark xerox speaks for itself. It took years of marketing dollars to educate consumers on the brand but today it's priceless.

Longwinded point - Proactive planning with trademarks are like an investment...Pick something unique and fanciful and the mark will pay dividends in the future potentially. Pick something generic, and you will reap shortterm profits only to be competing with others who will be copying your name.

Gerry J. Elman

Beyond the statutory rights and privileges mentioned by the previous respondents, there's value just in having one's trademark listed in the database that's commonly searched by businesses considering adopting a new trademark. Once a U.S. trademark application is filed, that trademark will be findable by an online search without charge in the U.S. Patent and Trademark Office database. (See weblink.) Generally, when someone sees another's trademark registration or even a pending application, he backs off.