This blog post has been authored by Nuzayra Haque-Shah, NH Legal

What are a trademark and its use for business? There are various companies that brew beer but how is it possible that we can easily identify Corona from Blue Moon? Aren’t we supposed to be confused considering there are hundreds of beer companies selling their product in the market?! Giving a different name, logo or catchphrase to a product makes it distinct from other products of the same category. This explains why McDonald’s is not “finger-lickin’ good”. To understand trademarks better, we have addressed some important common questions below.

A. What exactly is a trademark?

A trademark is a word, symbol or phrase used to identify a product and distinguish it from the product of another manufacturer or seller. Trademark prevents consumer confusion and makes it easier for them to select and purchase the goods and services they want. Example: the trademark “Nike” along with the Nike “swoosh” helps identify the shoes made by Nike and distinguishes them from shoes made by other companies, such as Adidas. When such marks are used to identify services (example: FedEx) rather than products, they are called service marks, although they are generally treated just the same as trademarks.

B. What can I Trademark?

A phrase, word, symbol, sound or even color are eligible for a trademark. Anything that works or functions as a source indicator for your brand and distinguishes your products and services from another qualifies as a trademark. Some examples are the color red for Christian Louboutin shoes, the apple symbol for Apple computers and electronics, the golden arches of McDonald’s, etc. However, the product or service must be used in a lawful commercial setting to obtain trademark registration and avail the law’s protection.

C. What are the benefits of registering a trademark?

Registration of a trademark has various benefits, some are:

1. Registration serves as an evidence that you are the valid owner and the exclusive right holder of the mark – this means that it can be legally presumed that upon registration, you are the owner of the mark and that you have the right to use the mark on or in connection to all goods and services listed in the registration throughout the territory of the United States.

2. Right to license your trademark – this means that a trademark owner can license its mark to another person/business. In other words, by licensing you basically rent your legally protected brand identity to another business that will either manufacture and sell products carrying your name or operate your franchise. The owner of a trademark can not only expand their brand by licensing, but also gain revenue. Example: Disney licenses its name to Swarovski, and Swarovski makes a Disney themed collection of crystal figurines. This helps with co-branding which enables multiple brands to collaborate and scale together.

3. Having a trademark registration gives you the right to stop others from using your brand name (either the same or similar in nature) in a manner that can cause confusion in the marketplace. Infringing acts might lead the consumers to believe that both the brands (original and lookalike) are associated. This is dangerous to the reputation of the owner of the trademark because such infringing activities can dilute the owner’s brand value. The infringer could be selling substandard quality of products or services under the established brand name, ruining the owner’s credibility and discoursing the consumers from buying the products. This is one of the most important and strongest advantages of registering your trademark. With trademark registration, you can bring an action in federal court on any matter concerning your mark – as mentioned above, federal registration grants a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide. This makes it easy for you to build a case against any infringing marks used by another person/business.

4. Inclusion in the databases of the USPTO – this means that when others, who are considering potential marks, are searching the database can find your mark and decide if their marks are identical to yours. The existence of your mark in the database can prevent others from selecting a mark that is too similar to your mark. Additionally, since USPTO uses the same database to conduct searches, it helps USPTO to not grant registration to a confusingly similar or conflicting mark.
Record registration with the US Customs and Border Protection – this means that the customs agency will use your trademark registration to prevent infringing and counterfeiting goods from being imported to the US.

5. Right to use the federal registration symbol ®– this symbol is an indication that you have successfully completed federal registration of your mark. Using the symbol without federal registration is illegal.

D. What does trademark infringement mean?

Any unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services is known as trademark infringement. Example: if you are in the business of making shoes, you cannot use a mark similar to or same as the Nike “swoosh” as it is very likely to cause confusion and mislead the customers. Using a mark similar to or same as Nike’s “swoosh” without authorization from the owner is an act of infringement.

E. What are the remedies available in the case of trademark infringement?

If infringement is proven in the court, remedies may include the following:

1. Injunction i.e. the infringer shall stop using the infringing mark

2. Destruction or forfeiture of infringing goods/articles

3. Monetary relief, including infringer’s profits earned by using the infringing mark, any damages sustained by the owner, and costs of legal action
In certain cases, the infringer has to pay the owner’s attorney fees

F. What is the difference between ™, ℠ and ®?

The symbol ™ can be used by any person/business to indicate that a particular word, phrase or logo is intended to serve as an identifier for the source of that product. Registration of the trademark is not required to use it, although, it is a good idea to use the symbol ™ whenever you are considering registration for a given mark or your application for registration is already pending.

The symbol ℠ carries the same basic meaning as the ™ sign, but it is used for unregistered service marks.

The symbol ® indicates that the word, phrase or logo is a registered trademark for the product or service. It must be used by the owner or licensee only upon registration and only in the regions where a valid trademark registration exists.

G. Conclusion

Trademark is essentially another word for brand or brand name. It acts as a de facto notice of ownership of the brand. Trademark registration enables you to stop someone from piggybacking off your goodwill by using a name/logo the same or similar to your mark. Additionally, to maintain a good reputation, trademarked businesses often work harder to provide quality services and products to their consumers, making trademark an important part of running a successful business. Every business has a name and/or logo, this means that every business has at least 1 trademark, and this should be a reason enough for you to rethink and identify how you can protect and enforce your brand.

Nuzayra is a virtual attorney which means the world is her office (or oyster?) and she’s based out of sunny Los Angeles. Being virtual helps Nuzayra save on traditional costs of running a law firm and allows her to pass on those savings to her clients while providing top quality service–so your legal fees are not keeping you up at night #happyclients.

As a creative entrepreneur and small business owner herself, Nuzayra loves working with startups and creative professionals and has represented clients in cannabis, technology, design, fashion, and entertainment.

One of the first attorneys to successfully obtain federal trademark protection in the cannabis industry, Nuzayra was named in the Daily Journal‘s ‘Top Women Attorneys’ for 2017. Since 2015, she has been recognized as a Super Lawyers Rising Star in Southern California for intellectual property, an award made to only 2.5% of attorneys in the region. She is often featured in legal outlets as an expert in intellectual property, and recently served on the Board of Directors of the South Asian Bar Association of Southern California.

Nuzayra holds the honor of being both a California attorney and a barrister in England and Wales, having been called to the Bar at Lincoln’s Inn in London. She attended the University of Southern California’s Gould School of Law, where she was awarded the Dean’s Merit Scholarship. In the UK, she received law degrees from BPP Law School in Leeds and Northumbria University, graduating with honors, in Newcastle.

During her spare time, Nuzayra loves hanging out with her husband and their pet cat Kiba while entertaining friends and family. She loves traveling to new countries and geeking out on fantasy movies–huge Lord of the Rings and Game of Thrones fan here!

You own and run a business–that in itself is a massive accomplishment. Now that you’ve created a business–let’s get to work on protecting your hard work and growing your business together.