Bridging the Gap Between Trademark Registration and Enforcement
| Publication year | 2013 |
| Pages | 16 |
Vol. 26, No. 2. 16. Bridging the Gap between Trademark Registration and Enforcement
Volume 26 No. 2
Mar/Apr 2013
In today's ever-changing and expanding marketplace, the underlying value of businesses has changed. The most valuable assets of many of today's leading companies are the goodwill and reputation associated with their name and products. Trade and service marks such as brand names, logos, and slogans designate the origin of goods and services while building goodwill among consumers. See Lanham Act § 45, 15 U.S.C. § 1127. Due to their heightened value, marks are often the subject of disputes; yet, despite such value, many owners are discovering that it is increasingly difficult to effectively protect their marks. Accordingly, this article highlights common areas of federal registration that develop into obstacles when protecting a mark by those who are less familiar with trademark law and litigation.
While protection of a mark begins with use in the United States, an often-neglected element of the trademark formula is a properly composed and secured federal registration. Any person can pursue federal registration with the United States Patent and Trademark Office (USPTO). See USPTO, Filing the Application and Other Documents, http://www.uspto.gov/faq/trademarks.jsp#_Toc27542669.S (last visited Oct. 31, 2012). In fact, the USPTO provides a deceivingly simple application process, including step-by-step guidelines and links to instructional "TM Newsflash" YouTube videos, which come across as campy parodies of the evening news. See USPTO, Trademark Basics, http://www.uspto.gov/trademarks/basics/index.jsp (last visited Oct. 30, 2012). As a result, mark owners may often apply for federal registration themselves or turn to their former attorney, who may have limited familiarity with trademark law.
Unlike the application process, the USPTO offers little guidance concerning the relationship between registration and the future protection of a mark - "the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark." Id. Such a configuration is akin to teaching a teenager how to build a car without any guidance about how to drive it. While the driver will eventually learn to drive, there will likely be a few mishaps along the way. Likewise, the consequences of registering a mark without anticipating conflicts can result in losing a mark, damaging the strength of the mark, or infringing on another's mark.
The USPTO should be commended for their registration system; still, it is precisely because of the convenience of federal registration that many applicants, who may not otherwise be familiar with trademark law, seek federal registration without foreseeing future disputes. Consequently, this article offers applicants direction to bridge the gap between trademark registration and enforcement in the areas of search and evaluation, priority, goods and services description, and how problems are compounded during international registration.
It is uncontroverted that federal registration affords many...
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