By: Sharon Urias, Esq.
Once you have a registered trademark, there are certain “good practices” that you should consider following in order to strengthen that mark. In general, trademarks become stronger as they become better known in the marketplace. However, others’ use of your mark may prevent its increase in strength and may, in fact, weaken it. In addition, use of your mark by others could cause you to suffer lost market share, reduced revenues and control of your reputation. Accordingly, you should consider implementing the following practices in order to protect your mark:
Marking: It is a good idea to include a registration notice on all marketing materials, your website, brochures, letters, advertising, other documents and other promotional materials. For example, you may use the ® symbol on your website, or you may use the legend, “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” According to the USPTO, there are no specific requirements as to where the ® symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. This symbol puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you do not maintain the registration or it expires).
Trademark Watch: A trademark watch service may be employed to monitor the use of your mark on the state and/or federal level throughout publications, advertising, the Internet, the USPTO, etc. Fees for these watch services range anywhere from a few hundred dollars to thousands of dollars depending upon the extent or nature of the monitoring services. Alternatively, you may choose to monitor the mark yourself. If this is what you prefer, you should regularly visit the USPTO’s website to view the publications of marks in the USPTO’s Official Gazette . You also may want to regularly search the internet and the media to monitor any potentially-infringing uses of your mark.
Quality Control: You will want to have in place procedures and/or guidelines to verify that company personnel are properly using your trademark in company advertising, brochures, letters, etc. For example, some companies have adopted the practice of using their marks only in all capital letters. In addition, you will want to ensure that the mark is being used consistently every time in all forms of media with respect to font size, typeface, color, spelling, capitalization and with placement/use of the ® symbol.
Cease-and-Desist Letters: If you find that someone is using your mark, or one that is similar, you may want to consider sending a cease-and-desist letter to the potential infringer. We recommend that if you discover someone is potentially infringing on your mark, you contact this Firm, or another of your choosing, to discuss your options. A well-written and persuasive letter may have the intended effect of ending the illegal use of your mark without the need for additional action. Sometimes, however, additional action may be necessary, through the USPTO or the court system.
*The information in this article is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from Greenspoon Marder LLP or the individual author(s), nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.
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