Trademarks: Are They Worth Registering?
By David Greber, Offit Kurman
Businesses often use trademarks or service marks to market products or services that they offer. How do these businesses avoid being sued for infringing other ‘marks’ and prevent other businesses from using confusingly similar marks?
By performing trademark searches and registering the trademarks with the US Patent and Trademark Office and by demanding that infringers stop. Trademark rights are acquired primarily by actually using a trademark, not by registering it.
Generally, the first business to use a trademark has priority in enforcing the exclusive use of the mark in its geographic market; federal registration adds national protection.
A trademark search should include a search of the Internet, state incorporation databases, Internet domain names, state trademark registration databases and trade publications. A complete search usually requires a professional trademark search firm with access to all of the most commonly used databases and the knowledge to formulate appropriate search queries to find confusingly similar marks.
Defensively, businesses want to minimise the likelihood of their own infringement. Offensively, businesses may want to demand that newcomers ‘cease and desist’ from using confusingly similar marks. Trademarks can be either assets or liabilities. Trademark searches and registration can both avoid business liability and create a valuable business asset.
David GreberOffit Kurman, Attorneys at Law, Washington, DC, USA
T: +1 240 772 5137
Offit Kurman, Attorneys at Law is a dynamic, full-service law firm. We are our clients’ most trusted legal advisors, and help them maximise and protect their business value and individual wealth. In every interaction, we consistently strive to maintain our clients’ trust and help them achieve their goals.
David Greber's extensive business law experience includes representation of companies and corporations in all stages of their business life-cycle, from initial founding, through growth and expansion, to sale. His intellectual property law background includes the registration and protection of copyrights, trademarks and trade secrets, and litigation of intellectual property infringement cases. David also holds the CIPP/US privacy law certification from the International Association of Privacy Professionals.
Published: Winter 2017 l Photo: SeanPavonePhoto - Fotolia.com