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TRADEMARK 101 – The Class is in Session!

Wei Wei Jeang

Q: What can I use as a trademark?

A: A trademark can be a number of different things: one or more words, a design, sounds, a scent, a color, a gesture, and even the shape of packaging. These can all be protectable trademarks if they are used to denote the origin of the goods being sold or services being offered.

Q: How can I protect my trademark from infringement?

A: The best way is to file for federal trademark registration. Once your trademark application is filed with the U.S. Patent and Trademark Office (USPTO), it serves as a notice to other potential infringers that you are staking an ownership claim for this trademark. If the trademark application matures into a granted registration of the trademark, you have exclusive rights to use the trademark with a nationwide geographical scope, and you can sue infringers who are using your trademark without permission.

Q: How can I find out if a trademark is not already being used by someone else?

A: Generally, you will need to search in the USPTO trademark database to see if anyone has registered or applied for the trademark. Then you will also need to check to see if the trademark has any presence on the internet, either as a domain name or being used by anyone else to conduct business. It’s best to consult with an experienced trademark lawyer to assist you.

Q: Why do I need to do any searching before I use a trademark?

A: The reason that you must not omit this due diligence step before using a trademark is because you don't want to inadvertently infringe someone else’s trademark and become liable for damages. You could end up the target of a trademark infringement lawsuit.

Q: Why should I work with a trademark lawyer to help me register a trademark?

A: Although the USPTO makes an effort to make its online resources available to the public to use, it could still be quite challenging to do everything right in the due diligence, trademark application, and trademark examination/prosecution processes. It is easy to get any one of the steps wrong and end up wasting time and money, and still not accomplish your goal of registering the trademark.

Q: How much do I need to change from an existing trademark to make it be ok?

A: It depends. The legal test used to assess this question is: “are the two trademarks so similar that there is a likelihood that consumers would confuse the two trademarks?” The two trademarks don’t have to be identical or even all that similar to result in confusion. One case in point is Buc-ee’s win against another convenience store’s trademark, where Buc-ee’s lawyer was able to convince the jury that the two logos are similar enough that there is a likelihood of confusion.

This is not legal advice for your specific situation. Please consult an experienced trademark attorney.

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