Trademark


A company’s brand is often its most important asset. Consumers associate recognizable brands with the quality, price, and general reputation of a company’s goods and services. Two common issues companies confront are when: (1) another company has a pre-existing, senior right to use the trademark you have selected, or (2) another company subsequently begins using the trademark you have invested time and money into promoting.

Problem #1: Another Company Has a Pre-Existing Right In Your Trademark

Another company may have previously established common law rights in your trademark or registered your trademark with federal or state authorities. If you violate a pre-existing, senior user’s rights, you may be vulnerable to (i) injunction from the future use of the trademark, and/or (ii) liable for monetary damages. Note that even use of a trademark that is confusingly similar to a pre-existing, senior user’s rights can result in liability.

Problem #2: Another Company Begins Using Your Trademark After You Have Invested Time and Money into its Promotion

A common law trademark, assuming you are the senior user, only permits you to preclude others from using your trademark in the geographical area where you do business, for the goods and services you offer. If a subsequent user adopts your trademark beyond your geographical scope of use, you have limited rights to preclude such use.

What can you do to protect yourself from infringement lawsuits and from subsequent users who would siphon off your goodwill?

McGlothlin Legal, PLLC (the “firm”) provides a suite of trademark counsel services to help you protect your business. Once a proposed trademark has been developed, the firm can assist with analyzing your right to lawfully use the trademark by (i) analyzing the mark for registerability, (ii) conducting a trademark search report to determine any pre-existing, conflicting uses of the trademark, (iii) issuing a trademark clearance opinion, opining on your ability to adopt and use a specific trademark for a particular class of goods and services, and (iv) registering your trademark with the United States Patent and Trademark Office (the “USPTO”), among other services.

Registration with the USPTO on the principal register provides numerous benefits, including:

· Evidence of your ownership of the trademark;

· Evidence of the trademark’s validity;

· Exclusive nationwide use of the trademark (except for pre-existing, common-law trademark users);

· Right to use the ® symbol;

· Statutory remedies against third-party infringers, including recovery of triple damages and attorney's fees;

· Elimination of a third-party infringer's defenses of good faith use and innocent adoption;

· Your trademark becomes incontestable after being registered for five years; and

· The creation of valuable intellectual property that may increase the value of your business, particularly in the event of a subsequent round of financing or an acquisition.

Whether you are considering adopting and using a new trademark, or have previously adopted a trademark and are interested in advice regarding your enforcement rights or possible exposure to liability, please contact McGlothlin Legal, PLLC for a thorough assessment of trademark law as it applies to your business.

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