Your Trademark is Your Business, You Better Protect It

You wouldn’t let a competitor back a truck up to your warehouse, fill it with your goods and drive away. Nor would you let a competitor use your office copier to copy your trade secrets. Too many businesses, however, do the equivalent when they fail to establish and protect their trademarks. Here are some tips.

by David V. Radack NFIB.com

Pick a strong one. A trademark can be a word, a name, a symbol or anything that indicates the source of a product or service. The more distinctive the trademark, the stronger it is legally. The four main kinds are:

* Fanciful: This is the strongest kind of trademark, often a coined term such as Exxon or Kodak.

* Arbitrary: The next strongest trademark is a common word or symbol not normally connected with the product, e.g., Apple Computers.

* Suggestive: One example is Coppertone suntan lotion. Not only are suggestive trademarks weak, a judge may rule that a suggestive trademark is descriptive, the weakest kind of trademark.

* Descriptive: If you have a popcorn company, the marketing department will probably want to name your new brand "Buttery Popcorn." But every popcorn company wants to describe its popcorn as "buttery," and the law will generally say it has the right to do so. Descriptive trademarks are hard to defend.

Clear the trademark. Check federal and state trademark registrations and unregistered trademarks to see if anyone else is using your trademark. Clearing a trademark helps avoid the embarrassment and expense of reprinting letterhead and taking down signs.

Get a federal registration. In the United States a trademark can be established under common law simply by using it. But registering your trademark enables you, for example, to collect penalties for trademark infringement.

There’s no excuse for not registering your trademark federally. You never know when a hot opportunity might open up in another state — or when a company from another state might try to muscle in on your turf.

Get international registration. If you do business in a foreign country, register your trademark there. Virtually every other country grants trademarks to the first company to register them, not the first company to use them. Your foreign distributor could register your trademark, keeping you from using it later.

Use it properly. Using a trademark improperly can erode your rights to it. Make sure you use the mark consistently and with the proper marking.

Don’t overuse it or let other people overuse it. "Elevator," "aspirin," "shredded wheat" and "cellophane" once were trademarks. They were used so often that they became synonyms for the products themselves rather than brand names, and they lost their trademark protection.

Fight back. Defending your trademark often deters imitators. A few years ago two prominent designers came up with hot-selling handbags. One designer prosecuted anyone caught making or selling knock-offs; the other designer didn’t. Today every street vendor along New York’s Fifth Avenue sells knock-offs of handbags by the designer who didn’t protect his trademark.

Proceed with caution if your mark is weak or if the claimed infringement is questionable. If you lose a court action, you create a "safe harbor" where a competitor can copy your products with impunity.

Here are some actions that can deter imitators without dragging you into a full-fledged court fight.

Cease and desist demand. In the case of an "innocent" or timid infringer, a letter demanding that the infringement cease and desist may be enough. This is a relatively cheap alternative to going to court. Make sure the letter preserves your right to sue. One drawback to a cease and desist letter is that it can be a warning to the counterfeiter, who could turn around and sue you first.

Court orders. A temporary restraining order can get you fast relief. A cease and desist order can also be effective. Make sure that any such order allows you to file suit without warning. The swiftest and surest form of relief is to obtain a court order barring the infringement and providing for the seizure of the infringing goods. It can be followed by preliminary and permanent injunctions.

Act quickly. A judge may not put a high priority on trademark cases, but you can’t afford delay. Your attorney should go in person to the courthouse to file the papers for any emergency court order and to get the hearing scheduled.

Have an investigator on hand for the serving of court orders and seizure of infringing goods. An investigator can be a good witness, because counterfeiters sometimes do or say incriminating things. I was present when some knock-off goods were being confiscated from a store. "Don’t take that!" the storeowner cried as a federal marshal reached for a handbag. "That’s a real one!" Needless to say, providing deliberate infringement became much easier.

Be leery of surveys. One legal tactic is to do a survey of customers to see if they confuse the real thing with the imitation. Surveys are expensive and often present ambiguous findings that are easily attacked in court.

Expect a quick response. If you win a court order against an imitator, demand that it obey the order swiftly. Carefully monitor any continued infringement and report it to the court.

David V. Radack is an intellectual property attorney at Eckert Seamans Cherin & Mellott, LLC, a national law firm headquartered in Pittsburgh, Penn.

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