By Sanjeev Kumar
Founding Attorney
Founding Attorney
Businesses in Texas often encounter several trademark issues that can significantly impact their operations. Common problems include unintentional infringement of existing trademarks, which can lead to costly legal disputes and potential rebranding. Businesses may also face challenges in securing trademark registrations due to their marks’ uniqueness and distinctiveness requirements. Furthermore, the state’s diverse and competitive market increases the likelihood of trademark dilution and disputes over similar branding. These issues underscore the importance of thorough research and strategic planning in trademark selection and protection for business operations in Texas.
Common Pitfalls That Can Lead to Difficulties With Trademarks
Here is a detailed discussion of some trademark mistakes that businesses should strive to avoid:
- Failing to Conduct a Thorough Search: Before adopting and using a trademark, it is crucial to conduct a comprehensive search to ensure that the mark is not already in use. This includes checking the U.S. Patent and Trademark Office (USPTO) database, state trademark databases (like the Texas Secretary of State), and other sources like the Internet. Skipping this step can lead to “likelihood of confusion” rejections during registration or legal challenges from prior users of similar marks. Additionally, understanding and respecting existing trademarks within your field can guide the development of a unique and non-infringing brand identity.
- Using Descriptive or Generic Terms: Trademarks that are merely descriptive of the goods or services they represent, or generic terms commonly used for those goods or services, are generally weak and challenging to protect. For example, a business cannot trademark generic terms like “Bookstore” for a bookstore. The more distinctive the mark, the easier it is to protect and enforce.
- Neglecting to Register the Trademark: While common law rights exist for marks used in commerce, even without registration, these rights are limited to the geographical area in which the mark is used. Registering a trademark with the USPTO provides broader protection, including exclusive rights to use the mark nationwide concerning the goods/services listed in the registration. Some businesses in Texas may use a mark for years without registering it, only to find out later that another party has successfully registered it, which can lead to costly disputes or rebranding.
- Overlooking Non-Traditional Marks: Trademarks are not limited to words and logos but can include colors, sounds, and scents. Businesses sometimes overlook the opportunity to protect these non-traditional marks. For instance, a distinctive color scheme used on a product or its packaging can be trademarked if it identifies its source to consumers.
- Failing to Monitor and Enforce the Trademark: After registration, businesses must monitor their trademark use and enforce their rights against unauthorized uses. Failure to do so can lead to a weakening of trademark rights and possibly cause a trademark to become so commonly used for similar products that it loses its distinctiveness and trademark protection (as happened historically with terms like “escalator” and “aspirin” in the U.S.).
- Not Understanding the Scope of Protection: Trademarks are categorized by classes of goods and services, and registration typically protects the mark within the specific context it is registered. A common mistake is assuming that trademark registration provides blanket protection across all categories and industries. This can lead to disputes if a business ventures into new products or markets without adequate protection. The scope of protection for trademarks in Texas, as in the rest of the United States, revolves around the trademark’s distinctiveness and the likelihood of confusion it may cause among consumers. The more distinctive a trademark, the broader the scope of protection it receives. The scope of protection depends on whether using a mark by others would likely cause consumers confusion regarding the source of the goods or services. Factors considered include the similarity of the marks, the similarity of the products or services, the area and manner of concurrent use, the degree of care consumers likely exercised, and the strength of the original mark.
- Incorrectly Using the Trademark: Using trademark symbols (™, SM, ®) is essential. The “TM” (trademark) and “SM” (service mark) symbols can be used with any mark to claim rights, even if not registered. However, the “®” symbol can only be used after the mark has been registered with the USPTO. Misusing these symbols, especially the “®,” can lead to legal problems.
- Neglecting Renewal Deadlines: Trademark registrations are not indefinite; they must be renewed periodically. In the United States, trademark registration must be renewed with a “Declaration of Use” between the fifth and sixth year after registration and every ten years thereafter. Missing these deadlines can result in the registration’s cancellation.
- Type of Goods and Services: The scope of protection also depends on the specific goods or services for which the mark is registered. A trademark might be protected in one industry but not in another if there’s no likelihood of confusion.
- Common Law Rights: Even without formal registration, common law trademark rights arise from the actual use of a mark in commerce within a specific geographic area. These rights are generally limited to the area where the mark is actually used.
- Poor Record Keeping: Maintaining good records of how and when a trademark is used is critical, especially if the trademark is challenged in court or at the USPTO. This includes keeping copies of advertisements, packaging, sales data, and any other materials that demonstrate the trademark’s use in commerce.
Takeaway
Avoiding these common mistakes can help businesses protect their brands effectively and avoid costly legal disputes. Consulting with a trademark attorney familiar with Texas state and federal trademark laws can provide invaluable guidance throughout this process. The Kumar Law Firm PLLC has experienced intellectual property attorneys who can help ensure compliance with your particular trademark situation. Contact us today.