Business and Tax Lawyer Blog

When a business owner decides to register his trademark or service mark, she can do so either at the state or federal level. The primary difference is that federal registration through the United States Patent and Trademark Office provides protection at a national level, however a state registration will not protect against infringement in another state.

There are a number of benefits that come along with federal registration which make the process well worth it. Here are a few of them.

1) Public Notice: The primary benefit of trademark registration is that it creates public notice of the business owner’s claim of ownership. Once your mark is registered, the general public is deemed to have knowledge that the mark is owned by you.
2) Presumption of Ownership: Registration creates a legal presumption of your exclusive ownership of the mark and gives you the right to use the mark in connection with the goods or services specified in the registration.
3) Federal Registration Symbol: Once your mark is registered, you have the right to use the symbol ®. You are permitted to use the TM or SM designation to put the public on notice of a claim of ownership even if you have not yet filed an application, but you can only use ® after the USPTO has actually registered the mark.
4) Ability to Bring an Action in Court: Registering your mark gives you the ability to bring an action in federal court when your mark is infringed upon.
5) Protection Against Foreign Infringers: A U.S. registration serves as the basis to obtain trademark registration in foreign countries and allows you to record the registration with the U.S. Customs and Border Protection Service in order to provide some protection against imported infringing products.

To read more about the benefits of federal registration as well as the process in general, see Trademark FAQs on the USPTO website.

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Does it seem curious that one brand name can be used on multiple products and services all at the same time? The reason is that federal law allows business owners to claim intellectual property rights in one or more of 45 different trademark and service mark categories. For example, a recent Wall Street Journal article chronicled the legal issues that Twitter is facing with regard to trademarking the term “tweet” due to the fact that two other Internet companies had trademarked the term first. The problem here is that Twitter and the two rival companies are involved in the same field and so there is a high risk of confusion. The article points out other companies who have trademarked different variations of “tweet”, such as a line of dolls called tweets, a record and video production company, a whipped marshmallow maker, a seller of bird remediation and pest control systems, among others. The difference is that these products really do not relate to the tech world and so the risk of confusion is much lower.

A business owner or prospective business owner should familiarize themselves with the 34 different trademark and 11 different service mark categories and determine which of them relate to their goods or services in order to gauge the likelihood of consumer confusion, keeping in mind that goods or services could potentially fall into more than one category. New applications that are too similar to existing marks in a given category or industry may be denied by the trademark examiners and, even if approved, an existing mark owner could challenge the designation in court, leading to a costly legal battle. The bottom line is that business owners should pick categories that will clearly block product competition that could be confusing to consumers and the public in general.

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Twitter is a highly successful Internet company that became an overnight sensation due to the modern appeal of social networking as well as the help of several high-profile celebrities. Twitter is essentially an online messaging service that allows its users to post 140-character messages known as “tweets”. It is fair to say that most Americans are familiar with Twitter and probably associate the company with the term “tweet”. Sounds great for Twitter, right? Well, there’s just one small problem. Twitter does not own “tweet” because of two Internet companies who claimed variations of the term first. Twitter’s attempts to trademark the term have been suspended by the U.S. Patent and Trademark Office and Twitter’s lawyers have argued that “tweet” was already well-known as a Twitter term before the rival companies filed their applications.

After several months of litigation, the Wall Street Journal reports that one of the companies has agreed to transfer its registered trademark of “tweet” over to Twitter. The moral of this story is that business owners should be proactive in filing for their trademarks and servicemarks. If they are not, they may find themselves left with no recourse when their unprotected names and phrases have grown in value. If you wait until after the fact to file for trademark and servicemark protection, there will likely be additional litigation that is costly and does not guarantee a favorable result. Furthermore, settlement negotiation will be costly as well, necessitating attorney’s fees and payments to regain control of the mark. The bottom line is that business owners should take steps to protect their interests sooner rather than later.

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