© Jovi Federici 2011
A registered trademark notice (®) provides important benefits to any business. Failure to properly register a trademark, and failure to provide notice, may have serious, negative consequences. Nevertheless, many businesses must ask the question of whether to register a trademark considering the importance of providing notice. The answer should become clear once you understand the benefits of trademark notice and the implications of failing to properly register your trademark.
The term “notice” has a special meaning in the law. The term “actual notice” means that an individual was actually aware of an existing trademark. Proving actual notice can be tricky. Unless a defendant admits to having had actual notice, it may be difficult, if not impossible, to prove actual notice until the time of service of a complaint upon the defendant.
The term “constructive notice” means that an individual should have been aware of the registered trademark, regardless of whether the individual was ever actually aware. When a defendant is said to have been on constructive notice, a court will infer that the defendant was aware of the trademark. This relieves the plaintiff of the burden of proving actual notice. Only a registered trademark provides constructive notice.
Failure to provide notice may limit a business’s ability to enforce protection over its most important business asset, its trademark. Without a registered trademark, a potential damage award may be limited: The plaintiff may only seek damages from the time the alleged infringement was brought to the defendant’s attention. By then it is likely that substantial damage to the plaintiff’s business, due to tarnishing of your trademark and good will, has already been done. Enforcement may become cost prohibitive due to the inability to recover the substantial portion of damages.
Other implications of not registering and providing notice may include the loss of the right to use your own trademark in another geographical area. In the case of Dawn Donut v. Hart’s Food Stores, 267 F. 2d 358, the court held that since Dawn Donut had registered its trademark, constructive notice would allow Dawn Donut to enjoin Hart’s Food Company from using the “Dawn” trademark should Dawn Donut ever expand its retail activities into Hart’s geographical area. Had Dawn failed to register, however, Hart may have been able to continue to sell “Dawn” donuts in a six county area of New York indefinitely.
Some businesses rely on unregistered trademark notice symbols (TM or SM), mistakenly thinking that they are receiving the protection of the statute. Only registered trademarks receive the statute’s protection. Moreover, indicating an unregistered trademark may tip off competitors that your trademark is not registered and send a message to the increasingly savvy consumer that your business does not take protection of its brand identity seriously. Using an unregistered trademark symbol is appropriate in some circumstances but it should never be a substitute for the properly registered mark.
Using an unregistered trademark notice symbol does not deny a plaintiff from seeking relief from trademark infringement. An injunction may be won and certain business torts such as “passing off” may be brought. The benefit of registration, however, is receiving a streamlined process for obtaining relief so that plaintiffs avoid lengthy, expensive trials.
A properly registered trademark provides constructive notice to potential infringers that your intellectual property is protected; you won’t have to prove that the defendant actually knew about the trademark. Furthermore, plaintiff may seek damages from the initial time of the alleged infringement. That means a shot at a full recovery from the damage that has been done to the business’s brand identity. The mark also shows the public that your brand image is unique, authentic, and genuine.
Registering a trademark with the U.S. Patent & Trademark Office can be a daunting task. Mistakes along the way will raise the cost of registration. Although the U.S. Patent & Trademark Office now provides a “do-it-yourself” Internet portal, it is still important to utilize the expertise of seasoned professionals in order to avoid certain pitfalls. For example, the application for a trademark that is similar to an existing registered trademark will likely be denied. Hire a specialist to conduct a proper trademark search in order to avoid having to resubmit or amend your application.
There are many lessons that the businessperson need not learn the hard way when it comes to trademark registration. For example, the improper use of registered trademark notice during the application process can cause the application to be denied. Moreover, posting the registered trademark notice (®) before the application has been fully processed and accepted may result in consumers’ claims of false advertising.
Use the trademark notice symbol consistently. The most severe consequence of failure to use a trademark is trademark abandonment. Perhaps the most famous example of this is the case of Major League Baseball v. Denarius, 817 F. Supp. 1103, in which the Los Angeles Dodgers sued the Brooklyn Dodgers for trademark infringement. The court held that LA’s failure to use the “Dodgers” mark between 1958 and 1981 constituted an abandonment of that mark. Generally, abandonment can occur in as little as three consecutive years of nonuse.
A carefully prepared intellectual property protection plan avails the business of the benefits of trademark notice while managing cost and minimizing risks. Online services like LegalSherpa offer registration and trademark search services for as low as $99. The greater cost is the registration fee at the Patent & Trademark Office ($325). These costs are nominal compared to the benefits of constructive notice and the presumption of the right to exclusive use.
One rule to follow is that if your business is doing well, making money, gaining a competitive advantage, you can be sure that there are others out there who are willing and ready to copy what brings you success. When success is based on your intellectual property, the life of your business will turn on your ability to protect your intellectual property and guard against the inevitable throngs of potential infringers. Registering your trademark is affordable and hassle-free with online legal services offered today. Register your trademark and display the trademark notice consistentl