Why Should I File for a Trademark Registration? Part One

Written by Andrew Reed.

Picture of trademark stampsYou may be wondering why you should register your business’s trademarks.  A business’s brand and identity are two of its most valuable assets. Recently, Nike was said to have received over 22 million dollars from Tiger Woods’ win at the 2019 PGA Masters solely because of the publicity of its trademark swoosh during the tournament. However, if a company does not take steps to properly secure and maintain its trademarks through trademark registration, it risks losing them.

This series of articles will examine the ways a company might lose the opportunity to protect its trademarks. In this article, we will look at the various ways that trademark rights may be lost before a trademark application is ever filed with the U.S. Patent and Trademark Office (USPTO).

Trademark Considerations When Choosing a Trademark

Some companies wait until after formation of the company and selection of a name to consider trademark registration. This can cause problems on multiple fronts for trademarks:

  • First, there may already be a trademark registration covering the company name, brand, product lines or identity.
  • Second, a company may have entered licensing deals that do not provide adequate control over the quality of products on which the mark is used.
  • Third, the company may make changes to its brand without considering the effect of the change on previously existing trademark rights.
  • Finally, many companies fail to consider the strategic implications of utilizing a trademark in too broad of a field.

Avoid Choosing a Trademark that Conflicts with another Trademark

A company may not get the benefit of trademark rights when a mark is chosen that is the same as or confusingly similar to a mark used by another company. For registered trademarks, the senior user, or the user with earliest use, is generally entitled to the trademark rights.

One option to avoid this situation is to have a trademark clearance search performed. These searches can identify who is already using similar marks and if they may have subsequently abandoned or lost the rights to the mark. Additionally, these searches may identify goods and services that your desired trademark may be utilized with, but also find other goods and services where the mark is available.

Avoid a Naked License to the Company’s Trademarks

If you have already decided on your trademark, logo or brand, then it is important to know how your licensing deals and contracts can affect your trademark rights. If a trademark is your brand, it is important to protect your brand and the products associated with it.

Courts in the U.S. have found that when a company licenses its trademarks without retaining quality control over those trademarks, then those trademarks are considered abandoned.  This is referred to as a “naked license.” To protect your trademarks, your company should maintain the rights to audit, inspect and have quality control review over any products or services that bear or include your trademark.

Avoid Unintentional Abandonment of Trademark Rights When Changing Name or Logo

As a company grows, its brand or identity may also grow. In particular, the name or logo of the company may change over time. However, it is important to confirm that your previous names or logos are not inadvertently abandoned by changing names or logos.

Many companies fail to carefully audit their trademarks and use of previous brands and logos before transitioning to a new name or logo. Some companies also fail to conduct a clearance search on the new logo or name before rolling it out. This can lead to conflicts with existing trademarks and additional expense if yet another change is required.

Why File for a Trademark Registration?

Finally, it is important to properly secure trademark registrations for those goods and services your company plans to offer.  Filing a trademark application gives a constructive date of first use, and once a registration is granted, the registrant is presumed to be the owner of the mark and the registrant is presumed to have the exclusive right to us the mark in connection with the goods or services identified in the registration.  Registration also provides constructive notice of the trademark to anyone using a similar mark after the filing date of the application.

If your trademark application includes goods and services that you may not immediately offer, it is recommended to file a second application for those goods or services. This can help avoid delaying your registration for those goods and services already in use. It can also help avoid the risk that your trademark application is not properly supported by specimens of use.

When a company files a trademark application for a trademark that is already in use, it must be supported by specimens of that trademark in use. These specimens must show the mark on the packaging for the goods, or on a webpage with sales information such as price, ordering information or availability. We will be going into trademark requirements for use in further detail in the next part of this series.

Questions About the Trademark Application Process?

These are just a few of the considerations or issues that a company may face when seeking a trademark registration. If you or your company needs assistance with any of these issues or evaluating any trademarks, the Dallas trademark attorneys at Carstens & Cahoon, LLP would be glad to help.

Feel free to contact trademark lawyer Andrew Reed directly to find out more about the trademark application process. You can also call our office at 972-528-9039 or fill out our online contact form. Stay tuned for part two of this series coming soon.