A recent article in the legal press described a trademark battle between two small companies:
“A trademark battle has broken out between the maker of NannyPay and the maker of NaniPay, two companies that offer solutions to the problem of how to pay a babysitter and comply with the law. Company 1, the user of NaniPay, sent a cease-and-desist letter to Company 2, the NannyPay user, saying that they should stop using the term NannyPay for their software or face a lawsuit from Company 1. But instead of stopping using it, Company 2 decided to win the race to court. lawsuit seeking a declaratory judgment that its NannyPay trademark does not infringe Company 1’s NaniPay trademark.” Cyber Law Archives.
Company 1 thought they could intimidate the small software company into giving up their trademark, but Company 2’s quick response paid off; and the case was resolved in favor of the software company. The legal battle was inevitable. Both Company 2 and Company 1 understood that the similarity between the two brands could confuse their customers, which would ultimately affect the profitability of each company. Both took steps to protect these valuable assets. Company 2 registered its trademark with the United States Patent and Trademark Office (“USPTO”) long before the lawsuit; and although Company 1 did not (a costly mistake), hired a law firm to require Company 2 to cease and desist from using the “NannyPay” brand.
Clearly, trademarks and service marks are worth protecting and can be among your company’s most valuable assets. How is a trademark or service mark identified? Easy: These are the names, images, or phrases that identify your product or service and make customers think of you when they hear or see your brand. When you think of a trademark, you might immediately think of “Coca-Cola®,” “Kodak®,” or “Windows®,” but your brand doesn’t have to be famous to be valuable. Think about the consequences of someone stealing your trademark or service mark and marketing it as their own: ouch! As I have tried to convey, lawsuits are made of that stuff. Also, imagine the consequences of using a trademark or service mark that belongs to someone else, even more material for lawsuits. If you have a trademark or service mark, determine if anyone else is using it. If not, register it with the USPTO. Registration is important because it serves as evidence that you owned your trademark in the first place and provides legal damages should you file an infringement lawsuit. Remember, though, if you go to the trouble and expense of registering your trademark, you must monitor it. Do regular internet searches and check your trade magazines, newspapers and other publications and make sure no one is infringing on them. Also, don’t save your trademark for a rainy day. A trademark must be used in commerce and non-use may be considered abandonment.
Here are ten reasons why you want to register your trademark. They have been widely published but bear repeating:
1. SEARCH FOR TRADEMARKS. Before registering your trademark, your attorney will ensure that a thorough trademark search is conducted to determine if someone else may be using the same or a similar trademark.
2. PRINTING COSTS. If you don’t register and find out later that another business already has the same or a very similar name, you’ll have to redo all of your business cards, stationery, advertising, and signage.
3. LOST CUSTOMERS. If you have to change the name of your business because you later discover that someone else is already using it, you could get confused and lose your customers.
4. EXCLUSIVE USE. Registering your trademark gives you the exclusive right to use it within the corresponding geographic area. 5. OPTION TO EXTEND. You could lose the right to expand outside the original business area if you do not register your trademark.
6. PRESUMPTION OF OWNERSHIP. Anyone else using your trademark will be presumed to be a willful infringer, and you may be entitled to monetary damages as a result of infringement.
7. PROTECTION OF STATE LAW. The laws of some states provide additional protection in an infringement action if the mark is registered in the state.
8. FEDERAL PROTECTION. Federal registration serves as implicit notice to the rest of the country that you are the owner of the mark, even if you are not yet doing business nationally.
9. RESPONSIBILITY TOWARDS THE OWNER OF RECORD. If you don’t register and there turns out to be a registered owner of the same or a substantially similar mark, that owner will have an indefinite period of time to find you and sue you for infringement.
10. MONEY, MONEY AND MORE MONEY. If you have infringed on someone else’s name or trademark, you can be ordered to change your business name immediately; waive all benefits obtained from the use of the unregistered trademark; and pay other damages, including punitive damages, fines, and attorneys’ fees.
findlaw.com
Think about these points in relation to your business.
