Courts deciding a trademark infringement action will mainly look at two issues in deciding an infringement action: 1) the similarity of the two marks, for example, are the marks identical or merely similar; and, 2) what goods or services are the marks associated with. The more similar the marks, and the more related the products or services of the two marks are, the more likely a court will find a likelihood of confusion and enjoin the offending party’s use of the mark.

Should your prevail in a trademark infringement action, you are entitled to some or all of the following remedies: 1) injunctive relief to enjoin the other party from using the mark; 2) profits the opposing party made as a result of its use of the infringing mark; 3) monetary damages you sustained as a result of the infringing party’s use of the mark; and, 4) the costs you incurred in bringing the infringement action. In addition, a court may award treble (triple) damages if there is a finding of bad faith on the part of the offending party.

Most business clients who come to me with trademark questions believe that filing a trademark is a complex and expensive process. Nothing could be further from the truth. While it is true that the entire trademark registration process usually takes 12-18 months, the actual filing of a trademark application can be done in a few hours. Once filed, the trademark application works its way through the U.S. Patent and Trademark Office (“USPTO”) with little work needing to be done. The filing fee paid to the USPTO is a mere $325.00. So for a couple hours of work by you or your business attorney along with a $325.00 fee, your business is entitled to have exclusive ownership of a mark, in your business’s line of products or services, across the United States.

What exactly is a trademark? A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  Words that you may trademark are the name which your business operates under and holds itself out to the public as (think ”McDonald’s” or “Microsoft”).  A phrase you may trademark are words that identify or distinguish the source of your product or service (think Nike’s “Just Do It” or Gatorade’s “Is It In You?”).  A symbol or design may also identify or distinguish your business from another (think Apple’s “apple” found on every Iphone, MAC and Ipod, as well as the symbols found on nearly every luxury car like the Lexis, BMW or Mercedes.)

How would your business benefit by obtaining a federal trademark registration? While you are not required to register for trademark protection, doing so provides server advantages, including notice to the public of your claim of ownership of the mark, a legal presumption that you own the mark nationwide, and the exclusive right for you to use the mark on or in connection with the goods or services set forth in your registration.  In other words, you may advertise your name, logo, phrase, symbol or design that identifies your business’s product or services withour fear that someone else could come along and steal those identifiers from you.

You can search the trademark database to check on a trademark’s availability by going to www.uspto.gov.

A trademark registration remains valid for 10 years, provided you file an affidavit that you are continuing to use the mark between the fifth and sixth years following registration.

With all of the above in mind, isn’t it worth it to have the name you do business under, along with any slogan, design or logo your business uses, registered to your business nationwide in the category of goods or services you provide? To me, the answer is a no-brainer.

Visit the USPTO website, as it is a very useful and informative site. It contains a list of frequently asked questions at http://www.uspto.gov/web/offices/tac/tmfaq.htm#Basic001, as well as the basics of what you need to know about trademarks at http://www.uspto.gov/web/offices/tac/doc/basic.

Need an Attorney to help your Maryland or DC business? Contact Raymond McKenzie at 301-330-6790 or ray@mckenzie-legal.com