Legal Questions: How To Defend A Trademark

Preparation is the key to defending a trademark. Find out how to protect yours. Information on the legalities of copyrights.

What is a trademark? It can be defined as "one word or more, or a design or a logo, or a combination of one word or more, and a design or logo, that is used to exclusively specify to the public products or services that you offer." Companies always trademark their product names and logos in order to protect them so that competitors cannot use the same name or logo and benefit from them. Nowadays, even catch phrases that company's invent are trademarked. Take for example the catch phrase, "MEMBERSHIP HAS ITS PRIVILEGES," which is trademarked by the American Express Company. When you hear that phrase, American Express wants the consumer to think of their company and its products and / or services exclusively.

If your company has a trademark, defending it can be harder than it used to be. The number of lawsuits that deal with trademarks has risen in the United States, according to the Administrative Office of the United States Courts. Because of intense competition, companies are heatedly fighting to protect their unique company names, product names, logos, and catch phrases.

In order to be able to defend your own trademark, you must first have your "ducks in a row", so to speak. This means that, you have chosen a "strong" trademark that will identify your company to the public. A strong trademark is one that specifically applies to a company, a brand name, a logo, et cetera. PEPSI, COKE, GENERAL MOTORS, DELL, and CBS are all examples of strong trademarks. When you hear any of these words, you think specifically of a certain company and the products and / or services they offer.


"Weak" trademarks, on the other hand, are trademarks that use common words which can be found in the dictionary. Think of the words, "book, frog, pencil, and mop" for a minute. They bring to mind ordinary objects that are not associated with a company or product. Protecting and defending a weak trademark is a difficult task that will undoubtedly cost you a large amount of money and time in court. Therefore, it's best to choose a strong trademark that is unique to your business and its products and / or services.

The second step is to perform a thorough search to make sure that no other company already owns the same trademark you have chosen. To do this, you can easily perform a search online at the United States Patent and Trademark Office (USPTO). If your trademark is available, you can then begin to legally use it. You can, by law, place a "TM" behind it too. These letters mean that you have not yet registered your trademark, but you intend to do so. It also means that you have acquired that trademark. ("Acquiring" and "Owning" a trademark are two different meanings.) After your trademark is properly registered, and has become your property, you can then place an "R" with a circle around it behind it. This shows the public that the trademark belongs to you exclusively.

The next step for you to defend your trademark is to register it with the United States Patent and Trademark Office (USPTO). This will require filling out some paperwork and a paying a fee.

It's important to remember that, after you have used your registered trademark on a continual basis for five years, then you may apply for "incontestability status". If you obtain this, then you can defend your trademark with a lot less hassle. This type of status doesn't mean that you can't be challenged. It does mean, however, that no company will be able to successfully claim that your trademark is confusingly similar to another trademark, et cetera.

Finally, even though more and more lawsuits are being filed in the courts nowadays as companies attempt to protect and defend their trademarks, that shouldn't affect you. As long as you have completed the necessary steps to create, use, and register your trademark, then the court, if a company would attempt to sue you, should be more inclined to take your side.

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