Protecting your trademark: Questions & answers regarding your most valuable asset

A fashion design company’s brand – and therefore its trademark – is undoubtedly one of its most valuable assets. The trademark represents the identity of the company to its current and potential customers and distinguishes it from others. The trademark provides customers with clear indication of the products the company has designed and approved to be sold. The following is important information that you should know to protect your company’s trademark from unauthorized use:


What can be a trademark?


Any symbol, word or graphic that you use to identify your brand or company can be a trademark. This includes the name of your business, logo, slogan, symbol, sound, or even color schemes. However, your trademark may qualify for a United States or foreign registration only if it is not confusingly similar to a prior trademark use or registration, generic or merely descriptive of your good or service. The more unique the mark, the easier it will be to protect.


Why register a trademark?


Registering a trademark appropriately will permit your business to take advantage of U.S. federal and foreign trademark law to protect it from others attempting to tarnish or freeload on the goodwill and brand equity that you have worked to create. The owner of a registered mark has the exclusive right to use and protect it. When a mark is a U.S. federal registered mark, it becomes possible to rely on the United States Customs Service to restrict infringing items from being imported. In addition, registration of a trademark may provide you with a viable asset that can be used for financing purposes.


Beginning the trademark registration process can alert you if there is anyone who has been using or has registered a trademark which is the same as or similar to your mark. If there is such a senior user, they may have grounds for protesting your use of your trademark. It is important to be informed of any senior use of a trademark you want to use prior to investing time and money in using the mark for your business. Consult with an attorney to determine whether your trademark can be used or registered.


Where do trademarks need to be registered?


In the United States, the trademark is registered with the United States Patent and Trademark Office (USPTO). Generally speaking, a USPTO registration only provides protection within the United States. If your company is selling abroad (even a website selling to customers outside of the United States), a trademark registration in each country where you sell or manufacture may be advisable to protect yourself. It can be expensive to register your trademark everywhere and while the U.S. and other countries have harmonized their trademark laws, you should consult an attorney to determine the most appropriate steps to obtain international trademark protection.


What is involved in the registration process?


Trademark registration begins with a thorough search for relevant concurrent uses of the trademark you wish to use and marks that may be confusingly similar that may either prevent registration of your trademark or give rise to a later challenge of your trademark. Once you have been advised that your selected trademark is available, an application to register the trademark is filed. Once an examiner at the USPTO determines that the mark is sufficiently distinct in your particular category of good or service, the USPTO will publish the mark for opposition. If the published mark is not opposed during the thirty day opposition period, it will receive a “notice of allowance.” At that point, you must file proof of actual use in order for the registration to issue. Typically, the entire process takes about six to nine months.


How can strong trademark protection best be maintained?


Frequent and proper use of your trademark builds an association of your business with that brand in the public’s mind. By contrast, failure to use a trademark properly may jeopardize it. For example, using the mark generically in your marketing materials can result in a loss of trademark rights. Apply the TMSM and ® symbols at the end of the mark so others know that you are claiming a right to the trademark. The registered trademark symbol, ®, may only be used once the mark receives a registration. The goods or services that contain the mark should maintain consistent quality. A strong trademark can be a powerful tool in establishing your brand and preventing others from profiting at your expense.


How long does the trademark protection last?


Ownership of a registered trademark may last forever so long as it is timely renewed after the first five years after the date of registration, and subsequently every tenth year. The mark must be continually in commercial use.


What are the possible courses of action to confront an infringer of a trademark?


If you believe that someone is importing or selling goods with unauthorized use of your mark or has a mark that is similar to yours, consult with an attorney. The attorney will evaluate your situation and determine the appropriate legal action.


I have something that I would like to trademark, how do I begin the process?


Good preparation prior to filing an application or investing in a trademark’s use is the best practice. It is recommended to begin the process by consulting with an attorney. Trademark matters can be complex and having an attorney as a guide will go a long way toward obtaining a strong, registered trademark for your brand in a cost-effective way.


If you have any further questions or are seeking legal advice, contact CFDA BSN Member Douglas Hand / Attorney / Hand Baldachin & Amburgey LLP / /