There are several key reasons to register a Trademark in order to strengthen your brand. Below are a few to consider when deciding what to invest in a trademark.
First, the benefits of federal trademark registration. Take as an example who has the rights to the term UNO. It is Italian for “One,” Mattel Toys has a ™ on Uno for a card game where the player with one card left is close to winning. If another similar card or board game had a similar or identical name, Mattel Toys has nationwide priority to use UNO as of the date of the filling of their trademark application, and with it, the right to prevent anyone else from using a confusingly similar trademark (hence the cease and desist letter). If this matter went to court, the owner of the Trademark has an automatic right to sue in a Federal Court for trademark infringement arising under The Lanham Act, a federal statute.
A second value of a Trademark is to prevent confusion between similar products. In this example, Uno can be used in the name of a pizza company or Italian restaurant because dining is distinct from the toy industry. A Naperville IL patent attorney will, each time he or she performs a trademark search and clearance, looks on the USPTO database for any registered marks that a client’s proposed mark would likely cause confusion with. Some of the factors (Du Pont Factors) that we analyze include: the similarity of the entire trademarks as to their sound, appearance, and commercial impression; the similarity of the goods; the market channels that are used with the marks; the fame of the prior mark; and if there has been any actual confusion between the marks, among others. Looking at our example: UNO is a famous game trademark, however the goods associated with both terms are different. Game vs. Dining. As is the likely channels used to market and sell the products. Thus, when performing a likelihood of confusion analysis, you must take all of the factors together and each specific case is different and unique from another case.
Third, the effects a misspelling has on a trademark registration or infringement suit. The test is not whether the marks can be distinguished when placed side by side, it is whether the marks are sufficiently similar in terms of their overall commercial impression that confusion to the source is likely. Therefore, in our example, the misspelling would not alter our analysis. So someone making a card game called UNI could not just claim they are not affecting our trademark since they spell their name a bit differently.
Lastly, the value that can come from a trademark. Trademarks have the potential to be very valuable assets for any company that are worth defending. Mattel Toys has certainly spent massive amounts of money in developing each of their products, and ensuring the goodwill that builds up with each of their trademarks. It is important for any business to create a business name and product name that is trademarkable. This allows the company exclusive use to these names and the ability to truly build a power brand.
If your Illinois business is in the process of selecting a trademark, going through the registration process with the United States Patent and Trademark Office (USPTO), receiving a cease and desist letter, or believe that someone else is infringing your trademark, contact a skilled attorney today.
Thanks to our friends and contributors from The Law Offices of Konrad Sherinian for their insight into the value of a trademark.