A trademark is a word, name, symbol or device used in trade with goods to indicate the source or origin of the goods and to distinguish them from the goods of others. Trademarks are ubiquitous in the world of business and include many different types of marks. For example, some of the more common types of trademark, brand names and logos, help distinguish a company’s products from its competitors’. Advertising slogans, which strengthen a corporate reputation in the minds of consumers, can also be trademarked. Certification marks, which are also a type of trademark, attest that a product meets a specified set of standards.

Despite this diversity, every kind of trademarks shares a few things in common. First, trademarks help your business communicate information about the quality of your products and services to the public. Through careful trademark selection and maintenance, you can set your company apart from the competition and establish a positive relationship with consumers.

Another advantage of trademarks is that they give their owners an enforceable right. Once your trademark rights have been secured, you can legally prevent competiotors from using the same or similar marks. If you discover another business making unauthorized use of your trademark, a court can enjoin it from further use and award damages for the infringement. Alternatively, you can license your trademarks to other businesses to receive a licensing fee. Your trademarks – like your employees, your equipment or your business relationships – are an asset that add value to your business and products.

Howard M. Cohn & Associates has practiced trademark law for over 35 years and can help you with a wide range of trademark matters.

You have developed a new product and you want to select a trademark under which you would sell the product. A trademark is a brand or name which identifies the source or origin of goods or services and usually is associated with good will which already exists or is expected to be developed when the trademark is used with the product or service.

Trademarks are generally divided into various tiers of distinctiveness: (a) arbitrary, (b) suggestive, or (c) descriptive. An arbitrary trademark is unrelated to the goods; it does not describe the goods, a characteristic of the goods, or some geographical relation of the goods. A suggestive trademark suggests the goods or a characteristic of the goods; an example is HALO for shampoo–it suggests brightness, for example. A descriptive trademark describes a characteristic of the goods; an example might be TRAVELFAST for travel agency services.

Several factors should be taken into account when considering the distinctiveness of you mark. On one hand, it is easier initially to market and sell products under a descriptive trademark, because these marks convey information about the nature of your goods or services. On the other hand, arbitrary marks, which bear no overt reference to the products they designate, receive a higher degree of trademark protection.

Regardless of where your trademark is situated on the distinctiveness spectrum, marks that have made a strong impression in your customers’ minds. These strong marks will both be favored by the trademark system and provide an invaluable marketing tool. A mark with strong consumer mental association can be achieved through a strategy of careful trademark selection, diligent marketing and attention to quality goods and services.

One final factor must also be considered in selecting your mark: the possible existence of conflicting marks. The primary test for determining whether a proposed trademark would conflict with an existing trademark is based on likelihood of confusion. More particularly: would an ordinary consumer seeking to purchase your product and a prior product which are offered under respective trademarks be likely to be confused as to the source or origin of the respective products? If affirmative, there probably would be a conflict. Consideration is given to whether the goods compete with one another, the channels of distribution through which the respective goods pass, bad faith, the similarity of the marks, the care of an average consumer for that type of goods, the relative strength of the marks, and so on. The guidance of a legal team familiar with these legal and practical considerations is therefore necessary to assist in this process.

Howard M. Cohn & Associates has the expertise necessary to help you at all phases of the trademark selection process.

Both the United States Patent and Trademark Office and individual states maintain registries of trademarks, generated by trademark users submitting their marks to be reviewed and entered on the registry. Although trademark rights are established through use of the mark in commerce, not through registration, registering your mark offers numerous important benefits and is therefore strongly recommended for most trademark users.

Registering your trademark puts the public and business on notice of your claim to the mark. Specifically, this helps prevent others from using your mark or potentially conflicting marks. This could save you the hassle of identifying infringers and enforcing the mark.

An additional advantage of registration is that it establishes a legal presumption of the ownership of the mark and the exclusive right to use it nationwide. Registration with the United States Patent and Trademark Office is also a prerequisite to bringing a suit in federal court to enforce the mark. Finally, if you operate internationally, registering your mark with the United States Patent Office can serve as the basis for foreign registration under the “Madrid System” and your registration can be used to prevent the importation f infringing goods from other countries.

Before entering your trademark on the registry however the Trademark Office will conduct a thorough review to ensure that the mark is eligible for protection and that all the formal requirements for registration are met. An examining attorney will scour the registry for preexisting marks that may conflict with your mark and investigate whether your mark has gained distinctiveness through its use in commerce. If you have not yet begun using your mark, you can still file an “intent to use” application. Successful trademark prosecution therefore requires careful planning and familiarity with examining procedures.

Howard M. Cohn & Associates has prosecuted over 150 trademarks and understands the nuances of the registration process.

Trademarks, like other assets, can only realize their maximum value if they are carefully managed. A well maintained trademark portfolio can enhance business relationships, give your business a competitive edge and create licensing revenue. Sound legal and business sense is required to take full advantage of these opportunities.

Poor trademark maintenance can lead to even worse consequences than missed business opportunities. Neglecting a trademark or failure to comply with renewal procedures can lead to the forfeiture of your marks. “Genericide”, which occurs when a once-distinctive mark loses its capacity to identify the source of a good, can also diminish your rights. Moreover, failure to take the necessary steps to enforce your mark against infringers can result in the mark’s cancellation.

Simply retaining your trademark rights however is only a secondary benefit of exercising them. Once you have established your rights in a trademark, you are entitled to exclusive use of the trademark. Therefore you can prevent competitors from using the mark without your permission. Also, you can sue to receive damages from infringing users.

Howard Cohn & Associates has counseled its clients in trademark enforcement and maintenance.