Trademarks: Protecting Your Brand
Trademarks are an important part of the business and association world. Business and association names themselves are trademarks. Business and association program names and even marketing phrases can be trademarks. These trademarks embody the association’s brand and identity. These trademarks can be extremely valuable, and are worthy of careful attention and protection.
The article summarizes some of the basics about trademarks that every association needs to know. Trademark law is a legal specialty, involving a vast range of specialized legal issues and knowledge. As such, this article should not be regarded as legal advice or substitute for the advice of counsel.
Trademark Basics.
One key point to remember about trademarks is that a trademark need not be registered to be a trademark. So, your business or association name will be a trademark even though you have not registered the name with the USPTO or California Secretary of State (Yes, trademarks can be registered with the USPTO and most states). If you do not register the trademark with the USPTO or Secretary of State, you can use ™ in conjunction with the name to give notice to the public that you am claiming the mark as a trademark. If you register the trademark with the USPTO, you can use ® next to the mark to demonstrate it has been registered.
The advantages of registering a trademark are substantial. First, it helps verify your right to use the trademark. It can help prove that you were using a trademark first. It allows for statutory damages for infringement on the trademark. This is a major point, as damages that result from trademark infringement are very difficult and expensive to quantify; if the mark is registered the holder need not prove damages. Finally, registration of the trademark makes it much easier to secure the cooperation of both purposeful and inadvertent infringers. This is especially important to associations, as it is not uncommon for non-members to falsely claim association membership, endorsement or certification.
It is important to bear in mind that not every name or logo can be protected from use by third parties. In order to be protected, the mark must be distinctive. For example, a soft drink maker would not be able to trademark the name “cola” because the word is not distinctive. On the other hand, the trademark “Coca Cola ®” was allowed to be trademarked because it was/is distinctive.
Disctinctiveness.
The requirement of distinctiveness is frequently a stumbling block for many associations. The problem is that most association names are “merely descriptive” rather than distinctive. For example, the California Association of Widget Makers trademark simply describes an association of widget makers from California. Fortunately, a name is generally deemed to have become distinctive based on five years of continuous use of the name in commerce. Thus, if an association has been using its name exclusively (no one else is using the same name) in commerce for more than five years, the mark is usually deemed distinctive. Brand new associations oftentimes use the ™ mark in conjunction with their names. Of course, logos are usually distinctive by design, so logos are rarely deemed merely descriptive.
Yet another facet of trademark law is that trademarks are granted based on the market category in which the trademark will be used. In fact, sometimes the same trademark can be registered in different product categories. For example, a software company might register the word “Infinity” as a trademark for a computer software consulting company. A second company could register the word “Infinity” as a brand name for an automobile.
Finally, trademarks can be words (depicted in a typed format), or designs. For example, one could register the name “California Association of Widget Makers” as words, as well as a distinctive design of the letters “CAWM”, as well as the entire name in a distinctive font. This would entail filing three trademark applications. Some organizations have numerous trademarks filed in different categories aimed at helping ensure that they can defend their brand. For example, check “ADA” or “American Dental Association” on the USPTO site search page. ADA has filed an impressive array of trademarks to protect its valuable name and logo.
What Should You Trademark?
Most businesses and associations do not thoroughly consider the various words and/or designs (trademarks) it uses to identify its products or identity. They almost always consider registering their name and logo. Additionally, associations should consider registering the name of its trade show, the names of key programs, its publications, its certification designations, and similar words or symbols as trademarks. Businesses should consider registering a unique product or service that is a main profit or selling point of the business. Just about any distinctive identifying mark used in commerce can be registered.
Maintaining a Trademark.
Most people do not realize that a trademark must be maintained. Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. In general, the owner of a registration must periodically file proof of continuing use of the mark, and an application for renewal. The USPTO does send out email remainders, but only does so once when renewals are first permitted. Oftentimes, these emails can be missed, so the dates for filing these documents require careful calendaring. If you fail to file within the required filing period and a grace period, the trademark is cancelled without notice.
Filings are required between the 5th and 6th year after registration, and again between the 9th and 10th years, and once every 10 years thereafter. Again, these dates should be placed on the organization's master calendar to avoid accidental cancellation.
Conclusion.
Trademarks are an important asset to any business or association. Professionals should focus on protecting the interests and assets of their business or association by monitoring and protecting its trademarks. The reputation and brand of the business and association may depend on it.
