#EntreprAdmire: A monthly series that highlights brands or entrepreneurs that have a certain “it” factor that is, well, admirable. This month, the focus is launching, growing, and getting organized (because what better time than the start of a fresh, new year to start a fresh, new project).
#EntreprAdmire: A new monthly series that will highlight brands and entrepreneurs that seem do be doing something right. The holiday season is upon us, and everyone’s thoughts have turned to parties, gift-giving and, most importantly, giving back. Kudos to these brands I #EntreprAdmire for combining entrepreneurship and philanthropy.
The final part of a four-part blog series on the intersection of fashion and intellectual property law, this post touches upon design patents and their role in the fashion industry. (Playing catch-up? Click for the previous posts on fashion and IP, namely, copyright, trade dress, and trademark/counterfeiting.)
Trademark is likely the first area of IP that fashion brands think about. It’s the name or symbol that will appear behind a runway, on a website, or on a hangtag. This post discusses trademark law protection for fashion brands, and the relationship between trademark and counterfeiting.
The first post in this four-part blog series on fashion and intellectual property (inspired by the end of New York Fashion Week last week) touched on the protection of fashion designs under U.S. copyright law. This post focuses on the role of trade dress in the fashion world.
You’re not thinking about a trademark search.
You’ve got a GREAT idea. Excellent! Have you given any thought as to what you might call it? The name by which everyone will know this great *thing* you’ve created? In an ideal world, you will have retained the services of an attorney to perform a trademark search prior to choosing a name. Spending a ton of money on merchandise, logo design, and labels only to find out later that someone else beat you to it? Not something that any business owner wants to deal with. Why oh why didn’t you think about a trademark search?
What’s the purpose of a trademark search?
The main purpose of a trademark search is to ensure that you, the brand owner, will not be infringing on any other person or entity’s rights if you use your brand name in connection with your goods or your services. The other purpose of a trademark search is to anticipate, to the extent possible, whether the mark is likely to be accepted by the Trademark Office if you choose to register it.
A thorough search will look for marks similar to yours used in connection with products and services similar to yours. A trademark lawyer will check sources such as the United States Patent and Trademark Office, Google, state trademark registries, and trade-specific websites. Oftentimes, trademark lawyers have special software that pulls marks that look or sound similar to your trademark. (The Trademark Office looks for marks that are similar to yours in sight and sound, too.) This special software also helps to identify the existing marks that carry the most risk.
Ideally, a search should take place before your launch, but that’s not always the case. Though every scenario varies, depending on the facts, it is usually best to have a trademark search performed so that you don’t find yourself spending more money on something that could have been prevented. In other words, spending a little money now could save you from spending more money — and a big headache — from dealing with attorneys’ fees, a rebrand, a cease-and-desist letter or a trademark infringement lawsuit later.
What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.
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Along with “how does the trademark registration process work?” one of the most common questions that I hear over and over is, “why should I register a trademark?” Your rights to your trademark or service mark begin the minute you first use of the mark “in commerce” (legalese for, essentially, public offering of your goods or services), regardless of whether you register. And, the current fee charged by the Trademark Office per class of goods or services in an application ranges from $225-$275 per class, which can add up if you are in the business of offering several types of goods and/or services. So why register? Because trademark registration comes with some hefty benefits.
The ® Is For Registered.
If you register a trademark with the United States Patent and Trademark Office (or “USPTO”), you will enjoy a variety of perks. Federal registration allows you to use the ® symbol, which is reserved for federally registered marks, and lets the world know that you consider this mark to be your brand, thus working to ward off infringers.
The Public Record.
Registration also creates a public record of your ownership of the mark and date of registration and date of first use. This can be important if you find yourself arguing with an infringer that attempts to claim his use of a similar brand predates yours.
Also, this public record prevents infringers from claiming their adoption of a similar mark was done in “good faith.” (In other words, “We didn’t know you existed” doesn’t really work as a defense if you have a registered trademark.)
The Potential Remedies.
Other benefits to registering your mark with the USPTO are the remedies available to a brand owner if infringement happens. Think of “remedies” as the things that you ask for in a lawsuit because of the harm that has been done to you. Remedies in general range from things like money damages in the form of lost profits, to non-monetary remedies such as a temporary injunction.
Owning a federally registered mark entitles the owner to the following:
- Certain statutory damages in cases of counterfeiting, including the potential to block imports that infringe upon your mark;
- Potential to recover triple or “treble” damages; and
- The ability to file a lawsuit in federal court (as opposed to state court).
These benefits are important weapons to have in your arsenal when policing your brand against unauthorized users.
Also, knowing that you’re entitled to the remedies listed above could make an infringer more cooperative. How so? Well, they don’t have to respond to your cease-and-desist letter. But the thought of being on the hook for a tripling of your monetary damages? That’s a powerful motivator to respond and work something out.
When you register a trademark with the Trademark Office, you get to enjoy protection in all of the United States. Without registration, you have basic rights. But an opponent could argue that your rights are limited to the states in which you actually operate. (This can leave some gaps in protection!)
The Point: A little investment now can go a long way. Familiarize yourself with these benefits and think about whether your brand could benefit from federal trademark protection.
What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online.