Ever since the internet boom, brick-and-mortar stores have started migrating online and the potential for trademark infringement has greatly increased. Not only has trademark law experienced changes in trademark infringement, but in the past 20 years the number of trademark applications has doubled. With companies like Wix, and Etsy making the online marketplace available for even the most computer illiterate, the potential for accidental trademark infringement is likely.
If you want to do business online you should have a federal trademark.
Previously small local businesses found safety and protection with a state trademark. Businesses that aren’t seeking to expand beyond their local geographical region, or don’t benefit from online business benefit greatly from a state level trademark. In the past 20 years, several local shops have tried to capitalize on the availability of the internet. Even if these great site businesses are currently protected by a state trademark, federal protection is a necessity. According to Perry Clegg, at Trademark Access,
“Companies that engage in business online are more likely to cross paths with other online businesses. Even if your business is local in nature, your online activities are likely to be noticed by consumers of similar businesses in remote geographic areas of the country. For this reason, those engaging in online business should consider the likelihood that their brands and logos may come into conflict with remote competitors and should seek to register their trademarks with the United States Patent and Trademark Office. While a state trademark registration may be useful in a few limited circumstances, a federal trademark is far more important and should be the first consideration for companies engaging in business online.”
Owning a trademark does not always give you an exclusive right.
When applying for a Trademark there are different classes in which you can apply for a trademark. If you own a trademark for the word “Spectrum” and it is registered in the heavy equipment class it doesn’t prevent someone from using it in the clothing class. Usually the standard that the courts and the United States Patent and Trademark Office use would be the likelihood of confusion. A company using the name Spectrum for road graders, and someone using the name Spectrum for clothes probably won’t cause any problems. Using the name HD Home Automation Systems for the name of a manufacturer of home automation, and the name http://hdhomeautomationsystems.com/ for an online retailer of home automation systems, may be confusing for people. This might be grounds for trademark infringement.
If someone is using a name that you really like, you still may be able to use the name if the industries are different enough. On the other hand, if someone uses your name and the industry is different enough you may not have a claim. In cases like this its probably best to talk to an attorney.
You don’t have to hire an attorney to get a trademark registration
Many people become easily intimidated by legal paperwork and forms. Trademark applications are no exceptions. However, trademarks can be done without hiring an attorney. There are a few basic steps that people must do in order to properly file their own trademark.
- Come up with an idea for a trademark
- Do a trademark search to make sure it isn’t in use
- Fill out the trademark application
- Pay the USPTO fees
- Respond to any office actions
Each one of these steps are pretty basic. Trademark Access has some walk through guides in their learning center. Most major cities have a patent or trademark resource center in their public libraries and some law schools have them. You can usually find resources to help you with the individual steps at any one of these places. Depending on the type of office action you receive you may need to speak with an attorney.
Trademarks Require Maintenance
Once you receive your certificate of trademark registration, you have to use your trademark in commerce, you have to renew your trademark and most importantly you have to enforce your trademark. Failure to do these can result in a loss of a trademark, or loss of claims for damages.
Trademarks have a lot of value
Trademarks go hand in hand with a brand. The trademark is the visible, or audible representation of a product of service that we are familiar with. For example: Google is trademarked and the name Google is valued at 44 billion dollars. When you hear Google you immediately think search engine. Microsoft, Walmart and IBM are also well known trademarks that are well-known all over the world. The name itself has value. In a lawsuit between Adidas and Payless Shoes, Adidas was awarded more than 300 million for trademark infringement. Payless was making shoes with 4 stripes and Adidas had trademarked 3 stripes.
As the internet increases ideas, and business popularity reputations are becoming more and more important. It isn’t easy to hide from bad publicity and it isn’t always easy to fix. If someone used your name or a name that is similar, it could cause irreversible damage to your reputation. It used to be easier to get by without proper trademark protection. Bad publicity didn’t spread as fast and trademarks didn’t cross boundaries as easy. Business has changed, trademark law has changed, and the type of protection you need has also changed.