Trademark Protection

201710.05

Trademark LogoFrom a legal standpoint, property can be a creation of the mind.

It doesn’t need to be something you can walk on or hold in your hands. It need only be something that is uniquely yours. Speaking of minds, especially those that reside in the heads of various Supreme Court Justices over the years, literary and artistic works, designs and symbols, and names and images used for commercial purposes are as real as physical property. All that’s needed to own and protect intellectual property is the idea itself and laws that protect that idea from theft or misuse.

Trademark Infringement

When a business has developed a design or a set of words that distinguishes it from others it is valuable property, and the penalties for violating a trademark can be steep. Trademark infringement is usually resolved with the threat of a civil lawsuit against the infringer. Terms of a settlement can be negotiated out of court, but if a case goes to trial and the alleged infringer is found guilty, the court can levy penalties equal to the dollar amount of damages to the infringed, plus attorney’s fees and court costs.

However, if a person is convicted of criminally counterfeiting trademarked goods it, such as manufacturing and selling fake Rolex watches or Gucci leather bags, it can be a felony under the United States Anti-Counterfeiting Consumer Protection Act of 1996. The person accused of criminal infringement might find himself having to purchase a bail bond to secure his release from prison while awaiting trial.

Famous Infringement Case

In one famous trademark infringement case the penalties were harsh, a testament to the value of a trademark for those engaged in commerce. In 1994, Adidas America sued Payless Shoes for infringing on the “three-stripe” design it had trademarked for its athletic shoes. It accused Payless of selling confusingly similar shoes with angled, parallel stripes. Fearing the sneakers would dupe buyers into thinking they were buying Adidas-branded shoes, Adidas demanded a jury trial. In the end, Adidas was awarded $305 million—$100 million for each stripe — for the damages Payless Shoes did by undermining the goodwill Adidas had established for its brand.

Patents protect inventions and improvements to existing inventions. Copyrights cover literary, artistic, and musical works. Trademarks are brand names and/or designs which are applied to products or used in connection with services.

A trademark typically protects brand names and logos used to identify a brand in pursuit of the sale of goods and services. A patent protects an invention, and a copyright protects an original artistic or literary work. It plays out like this: If you invented a new product, you would apply for a patent to protect the invention itself. You would then apply for a trademark to protect your newly designed brand name, logo or advertising catch-phrase. Finally, you would apply for a copyright to protect the original, artistically-created TV commercial you use to market the product.

The United States Patent and Trademark Office

The United States Patent and Trademark Office issues all trademarks, but it is not responsible for enforcement of the mark. If another business uses a trademark or trade name in a manner likely to cause dilution of your registered trademark, the person who owns the trademark can challenge the infringement.

In the United States, a trademark owner must use the mark in commerce in order for it to be protected. A lapse in use can result in a forfeiture of the legal protection afforded the trademark owner. The USPTO’s has announced it is stepping-up enforcement of the “use it or lose it” policy to clear the system of dead wood. A recent analysis conducted by USPTO found that among 500 randomly chosen registrations 50 percent of U.S. trademark owners failed to provide proof their trademarks were in use thereby leaving them unprotected.