A strong trademark is a valuable business asset. In the minds of consumers, it becomes synonymous with the good or service it represents. For example, if a consumer sees Apple's apple logo graphic, computers immediately come to mind. For this reason, trademarks must be protected and infringement must be fought aggressively. Renner Law has the experience to bring or defend trademark infringement litigation. Additionally, Renner Law helps individuals and businesses protect their valuable trademark rights by providing thorough trademark registration and counseling services.
A trademark can be any type of device used to identify the source or origin of a product or service, including:
- "Non-traditional" elements like sounds, smells, and colors
- Trade dress
Trade dress refers to the look and feel of a product, service or product packaging or labeling. It includes the overall appearance or impression created by the design and other elements. Protectable trade dress can include the shape of a bottle or a restaurant's décor, menu and style.
An application to register a trademark in the United States is much less costly than a patent filing. A trademark application can be based on either: (a) a “bona fide intent to use” the mark, which essentially allows you to reserve a mark for up to three years after allowance of the application by the United States Patent & Trademark Office; or (b) actual use of the mark in US commerce; or (c) ownership of a foreign application or registration. While a trademark search prior to adoption is generally not legally required--and no search is foolproof--performing a proper search can help prevent conflicts by analyzing whether a proposed mark is available for the goods and services for which it is intended to be used.
Some of the benefits of registration on the USPTO’s Principal Register are:
- discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search;
- protects against registration of confusingly similar marks, because the USPTO has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks;
- treats the mark as if used nationwide as of the application date, regardless of the actual geographic use of the mark, which contrasts greatly with the limited geographic range of common law trademarks;
- serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, with heightened protection after five years and the possibility of becoming “incontestable,” which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark;
- grants the right to use the ® symbol when the mark is used for the goods and services listed in the registration (although unregistered marks are often designated by a superscript “TM”, this use has no legal significance), which may deter potential infringers;
- grants the right to sue in federal court;
- entitles you to the ability to recover profits, damages and costs for infringement, including the possibility of receiving treble damages in certain circumstances, thereby providing for potential significant monetary recovery in appropriate cases;
- entitles you to the ability to recover attorneys’ fees in certain cases;
- provides a basis for foreign registrations, assisting protection of your mark(s) worldwide as business expands; and
- empowers US Customs and Border Protection to block imports that infringe the mark or are counterfeits once the registration is separately “recorded” with Customs, putting Customs in your corner in preventing infringement at no additional cost to you.
In order to prevail in a trademark infringement action, a plaintiff must establish that: (1) the mark accused of being infringed is valid and legally protectable; (2) the mark is owned by the plaintiff; and (3) the defendant's use of the accused mark to identify goods or services is likely to create confusion concerning their origin. In particular, the plaintiff must show that the defendant's use of the accused mark is likely to cause confusion as to the affiliation, connection or association of the defendant with the plaintiff, or as to the origin, sponsorship, or approval of the defendant's goods, services or commercial activities by the plaintiff. This "confusion" is what underlies the analysis and determination of trademark infringement. As such, use of marks that are too close or so similar to other marks that they create a "likelihood of confusion" are deemed improper and an infringement of the prior owner's trademark rights.
In certain instances, a trademark owner may have a claim for "dilution" against a party using a similar mark - even if a "likelihood of confusion" cannot be proven sufficiently to establish trademark infringement. Dilution claims are generally categorized as either "dilution by blurring" or "dilution by tarnishment." In either case, to bring a claim for dilution, the mark must be sufficiently distinctive or have acquired sufficient distinctiveness to be considered a famous mark.
Renner Law understands the need to prevent competitors from trading on the goodwill of your brand or business name and we pursue those who would attempt to infringe your trademarks in both federal court and state court. Typically, as with instances of copyright infringement, Renner Law seeks preliminary and permanent injunctions for trademark infringement clients in the form of a court order prohibiting future acts of trademark infringement. In addition, Renner Law seeks monetary damages sustained by trademark infringement clients for past acts of infringement. In exceptional cases, Renner Law seeks the recovery of reasonable attorneys' fees. While trademark litigation is often settled promptly prior to trial, Renner Law prepares each case as though it will go to trial. Doing so, Renner Law is always thoroughly prepared in the event the case doesn't settle quickly.
Domain Name Disputes
Renner Law's trademark practice also includes the protection of clients' domain names under the Anticybersquatting Consumer Protection Act (ACPA). "Cybersquatting" is a term coined to describe the bad faith registration and use of another party's trademark as a domain name. Under the ACPA, which is a federal statute designed to prevent cyberpiracy, anyone who registers, traffics in, or uses a domain name that is identical or confusingly similar to another party's distinctive trademark, with a bad faith intent to profit from that mark, is civilly liable. Renner Law fights to protect against cyberpiracy/cybersquatting and thoroughly investigates the extent to which a domain name registrant had a bad faith intent to profit from using a confusingly similar domain name and will seek forfeiture, cancellation or transfer of the domain name and monetary damages for violation of the ACPA as appropriate.
Renner Law serves trademark infringement clients throughout Rhode Island and Massachusetts from its Providence, Rhode Island offices. Call (401) 404-5251 or contact Renner Law online today.