Oregon Attorney Helping Businesses Secure Valuable Trademarks
Strong trademark rights are foundational to the success and stability of a business in today’s IP-dominated markets. Unfortunately, many small companies (early stage startups, local mom ‘n pop stores, etc.) see intellectual property as a commercial consideration that is not yet relevant to their business, as they may not realize that trademark rights are critically important to their growth objectives.
If you’d like to learn more about trademark rights, enforcement, monetization and overall business strategy with respect to trademark assets, Yellow Dog Legal is here to help.
What is a trademark, exactly?
The United States Patent and Trademark Office (USPTO) describes a trademark as a “word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods [and services] of one party from those of others.”
This is a rather broad definition — and that’s by design. A unique brand logo is a potentially enforceable trademark, as is the slogan used to advertise the brand. Nike is perhaps one of the most commonly-used examples of the range of available trademarks. Not only is the brand name (Nike) a protectable trademark, but also the logo (Nike’s swoosh symbol) and the popularly advertised slogan, “Just do it.”
Trademarks that are insufficiently distinctive — in other words, that are so generic that they fail to accurately identify the source of goods and services — are unenforceable. For example, if you attempt to enforce a purported trademark over the term, “Laptop Computer,” courts are unlikely to deem the mark valid. The term is simply too generic and does not sufficiently distinguish your goods from its general category, or from those offered by competitors on the market.
While trademark rights are granted “by default,” it’s worth registering trademarks with the USPTO. Registration has a number of benefits:
- It provides nationwide notice to potential infringers so that they will not misuse, tarnish, or otherwise dilute your trademark. If they do infringe, you won’t have to prove that they were notified as to your trademark’s existence.Registration leads to presumptive notice.
- It provides a well-documented date-of-creation for evidentiary purposes.
- It may give rise to additional damages if infringed (i.e., triple damages recovery and attorney fees).
- It automatically brings the case under federal jurisdiction, minimizing time-consuming forum shopping strategies in litigation.
It’s important to understand that trademarks are a long-term, continuous responsibility. It is not enough to simply create and register a trademark. Trademark rights may weaken and eventually fail if you do not actively police enforcement by sending cease-and-desist letters to infringers, allowing the trademark to transform into a generic term, etc.
As the trademark registration and enforcement process can be rather complex, it’s worth reading more to better understand these processes and how to secure your trademark rights. Visit our Trademark FAQs page for additional information.
Protecting Your Brand
If you have a valid and enforceable trademark, then you have a right to protect your trademark rights (i.e., your brand) against infringement by third parties. A successful trademark infringement claim requires that you show that the defendant has created a “likelihood of consumer confusion” with respect to the source of their goods or services.
Several different factors will be assessed in concluding whether the defendant created a likelihood of consumer confusion: similarity in goods and services, the inherent distinctiveness of the original trademark, data or survey responses showing that consumers were actually confused, and the defendant’s intent.
For example, if your trademarked logo for your company includes a distinctive swirl pattern, and the defendant (in the same industry) copies the pattern for their logo, you would ostensibly have an actionable trademark infringement claim.
Now, what happens if you’re being accused of trademark infringement? Being on the defense side can be frustrating, as you might have to rebrand if you cannot show that your trademark is valid and unlikely to cause consumer confusion. In many cases, this can be avoided by proper planning in the trademark registration phase — work with Yellow Dog Legal to conduct a comprehensive trademark search beforehand. That way, if a similar mark is found, you can take steps to make your own mark sufficiently distinctive and avoid any “confusion.”
Strategic Counsel and Advisory Services
Yellow Dog Legal understands how IP rights — including trademark rights — are linked to the success of today’s businesses and provides strategic counsel. Nicole has a keen eye for the business-side of intellectual property rights, and is committed to developing, enforcing, and monetizing client trademark portfolios to the extent that doing so furthers their business objectives.
Nicole serves in an advisory role with many clients, helping them navigate the complex and uncertain world of intellectual property in the context of their business.
Contact Yellow Dog Legal for Assistance
Ready to speak to an experienced business attorney about a trademark IP matter? Call Yellow Dog Legal at 971-350-8516 or complete an intake form online to schedule a consultation.
Consultation is free and confidential, so there’s absolutely no risk in connecting to an attorney and having a conversation about the opportunities and challenges. Get in touch to learn more about what you can do to secure potentially-valuable intellectual property and trademark rights.