Whether you are an individual, for profit business, or a non-profit organization,  protecting your intellectual property should be part of your business strategy.  Your intellectual property can include your logo, colors, and/or any statements or phrasing associated with your business, among many other concepts.  Using Nike as an example, protectable IP would include the font choice Nike uses on its clothing lines, the famous Nike “swoosh”, and phrases like “Just Do It”.

There are several terms that people use interchangeably when talking about protecting their (or their company’s) intellectual property.  You may hear business people discuss trademarks, patents, copyrights, domain names, and business name registrations all in the same sentence, but not all of those legal protections are necessarily the same or appropriate for all circumstances.

Today we focus on trademarks.   A trademark usually protects brand names and logos used on goods and services.  As anyone who has gone through a branding initiative knows, it can often take thousands of dollars (sometimes much more than that) to arrive at a winning company or product brand design.  Once that investment of time, dollars and energy has been made, you should want to legally protect your exclusive rights as to that branding?  Additionally, the ability to exploit the branding on merchandise, printed materials and the like going forward has an economic value as well.

For now, we’ll set aside patents (which protect inventions) and copyrights (which protect an original artistic or literary work).

What surprises businesspeople that I talk to is that there are actually several different types of trademarks.  Not every situation demands a federally registered trademark through the US Patent and Trademark Office.  There are two other types: common law trademarks and state-level trademarks.

A common law trademark arises by virtue of a person’s or company’s use of the mark (a brand/logo/design) in commerce.  The common law, which evolves from prior court decisions, has certain protections available through the courts, but not the remedies that are available to federal copyright holders.

Common law trademark holders can use the designation “TM” trademark or “SM” service mark designation to alert the public of their claim of a common law trademark.  There is no registration necessary for a party to legally use the “TM” or “SM” designations.  However, a common law trademark has limited enforceability and a common law trademark holder does not get the protections of federal copyright law that will be discussed below.

A state level trademark is exactly what it sounds.  In Pennsylvania, there is a trademark filing that one can submit to the Pennsylvania Department of State.  It is inexpensive and quick.  The benefit is that within the Commonwealth, the holder can enforce the trademark – i.e. prevent other parties from using the same branding, logo, etc.  The drawback is that this ability to legally compel an infringer to stop only exists within the reach of the Pennsylvania state courts.  If the infringing activity takes place in New Jersey or New New York or any other state, the Pennsylvania state level trademark protection is ineffective – it only covers activity within Pennsylvania’s borders.

This leads us to the most comprehensive and muscular kind of trademark protection available: federal trademark registration with the US Patent and Trademark Office.  This requires a more involved application that at the state level, which includes an attorney review of your application at the USPTO as well as possibly follow up questioning from one of the USPTO examining attorneys.

Although the application process is more rigorous and more costly, there are significant benefits to owning a federal trademark registration, including:

1. Public notice of your ownership of the mark;
2. A legal presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
3. The ability to bring an action concerning the mark in federal court, and obtain nationwide service of process against an infringing party;
4. The use of the U.S. registration as a basis to obtain registration in foreign countries;
5. The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
6. The right to use the federal registration symbol ®; and
7. Listing in the United States Patent and Trademark Office’s online databases.

For more information contact me at (610) 393-6763.

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