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A trademark or service mark (collectively referred to as “trademark”) may include any word, phrase, name, symbol, or design, used to identify and distinguish the products and services of one seller from those of others.  Stated differently, a trademark allows a consumer to identify a particular good or service with the source of such good or service.  A registered trademark protects a brand of a business and the energy, money, resources, and time spent developing the goodwill associated with the brand.   A trademark is one of the most important assets a business will ever own.

A strong trademark distinguishes a business’s product or service from the competition and provides a competitive advantage. A weak trademark may lead to legal disputes and affect a business’s marketing efforts.  There are different types of trademarks.  The types of trademarks include word marks, design marks and trade dress.

A trademark may be entitled to protection under state common law even if the trademark has not been registered with the United States Trademark Office, or other state trademark offices, such as the New York Department of State. However, a registered trademark has several advantages.  For example, in cases where trademark infringement is willful, a business may recover an infringement award for triple the amount of a business’s actual damages (“treble damages”), plus attorney’s fees if a business’s trademark is registered with the United States Trademark Office.  Treble damages may be helpful for leveraging a quick and effective settlement against infringers. Also, being entitled to attorney’s fees may make it easier to hire an attorney who is willing to take a case on a contingency basis.   Also, a federally registered trademark provides the trademark owner with nationwide protection, which is also a huge competitive advantage.

To federally register a trademark, an application must be submitted to the United States Patent and Trademark Office.  The types of trademark applications include a use based application, also known as a §1a application (based upon §1(a) of the Trademark Act, 15 U.S.C. §1051(a)), and an intent-to-use, also known as a §1b application (based upon §1(b) of the Trademark Act, 15 U.S.C. §1051(b)).

To file a use based trademark application for registration, a trademark must be used “in commerce”.  “In commerce” for goods and “in commerce” for services can have different legal definitions.  It is very important to properly determine if a trademark is being used in commerce before filing a trademark application because if the incorrect application is filed, then a trademark registration may be found invalid at a later date.

Many businesses, entrepreneurs and individuals in New York City and the Tri-State Areas understand the importance of selecting and protecting their brands with registered trademark.   It is not unusual for businesses, including those in New York City, to invest significant time and money promoting a good or service.  Because of this, many businesses in New York City and the Tri-State areas register their trademarks to protect their brands and the energy, money, resources, and time spent developing those brands.

Many businesses seek professional help when designing a logo or name of brand because of the value of a trademark. When considering what would make a good trademark, the distinctiveness of the trademark matters. The more distinctive the mark, the easier it is to register and protect the trademark from others.  However, even if a trademark is not distinctive, a business may be able to register the trademark if the trademark has acquired distinctiveness.

Another reason to seek professional help before creating a brand name is to ensure that the trademark will not create a “likelihood of confusion” with another trademark.    Using terms for a trademark that will likely cause the consuming public to be confused or mistaken about the source of a product or service sold creates a likelihood of confusion.  The United States Trademark Office will not allow a trademark to be registered if it is confusingly similar with or creates a likelihood of confusion with another a registered trademark.  Additionally, there may also be trademark infringement where a likelihood of confusion exists between two marks. Mark Terry, Esq. and Derek Fahey, Esq., the partners at the firm, have experience in counseling clients regarding their New York, United States and International trademarks.

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