A good trademark or service mark will distinguish a brand or business from its competition and can provide a competitive advantage. A weak trademark or service mark can lead to legal disputes and affect a business’s marketing efforts. There are different types of trademark or service marks. The types of trademarks and service marks include word marks, design marks and trade dress. A trademark or service mark may be entitled to protection under U.S. and international trademark law even if it is not registered. However, registration of a trademark or service mark has several advantages.
For example, in cases where the trademark or service mark infringement is willful, with a federal trademark or service mark registration, a business may recover an infringement award for triple the amount of a business’s actual damages (“treble damages”), plus attorney’s fees if someone willfully infringes on a business’s trademark or service mark. Treble damages may be helpful in 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.
In order to federally register a trademark or service mark, an application must be submitted to the U.S. Patent and Trademark Office (“USPTO”). The types of trademark and service mark 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)).
In order to file a use based trademark or service mark application for registration, a trademark or service mark 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 or service mark is being used in commerce before filing a trademark because if the incorrect application is filed, then a trademark or service mark registration may be found invalid at a later date.
Many businesses, entrepreneurs and individuals in the City of West Palm Beach and Palm Beach County understand the importance of selecting and protecting their brands with trademark and service marks. It is not unusual for businesses, including those in Palm Beach County, to invest significant time and money promoting a good or service. Because of this, many businesses in Palm Beach County and the City of West Palm Beach use trademarks and service marks to protect their brands.
Because of the value of a trademark or service mark to a company, many businesses seek professional help when designing a logo or name of brand. When considering what would make a good trademark or service mark, the distinctiveness of the trademark or service mark matters. In general, the more distinctive the mark, the easier it is to register and protect the trademark or service mark from others. However, even if a trademark or service mark is not distinctive, a business may be able to register the trademark if the trademark or service mark 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 or service mark. Using words 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. A trademark which is confusingly similar to a registered trademark cannot be registered. When a likelihood of confusion exists, there may also be trademark infringement.
Mark Terry, Esq. and Derek Fahey, Esq., partners in the firm, have experience in counseling clients, including Neptune Research Inc. (NRI), Riviera Beach based business that recently won the South Florida Manufacturing Association’s Manufacturer of the Year Award, regarding their United States and International trademark and service marks. The following trademark registrations have been obtained by Mark Terry and Derek Fahey for clients based in Palm Beach County.