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March 30, 2020 in

What is a Trademark and How Can I Protect One?

What is a Trademark and How Can I Protect One?

As society grows and more companies enter the market you will see more trademarks in your everyday life.

What is a Trademark and How do you protect one? By Watts Guerra attorney Jorge Mares

What is a Trademark?

A trademark can be any word, name, symbol, design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another [1]. Ideally, a trademark owner wants to develop a good mark that will allow its customers and society to easily identify its products. Once a company has established a well-known trademark, it will want to do whatever it can to protect the integrity and good moral of its trademark.

What is Considered Abandonment?

One of the most important things a trademark owner needs to be aware of is trademark abandonment. If a trademark is deemed abandoned, the protections a trademark owner once had will be lost. A trademark will be considered abandoned when its owner no longer uses it and has no intention to continue to use it in the future. A trademark’s owner intent can be inferred from the circumstances. The reason trademarks are susceptible to abandonment is to prevent a person from sitting on useful marks. Where one has not used his trademark for three consecutive years, it may be considered abandoned. Therefore, it is wise to continue to use your trademark to prevent it from falling victim to abandonment.

Moreover, a trademark may become abandoned through improper assignments and licensing. Before assigning or licensing rights to your trademark, it is wise to consult an attorney experienced in protecting trademarks. In other scenarios, a trademark that was once thought to be a useful “distinctive” trademark, may at some point in the future become generic and lose its protections. The most common instance where a trademark became generic is in the case of the trademark “Thermos.” Originally, Thermos was a trademark used to identify a manufacturer’s product. However, it became generic when people began associating the word “Thermos” with any thermos, regardless of the manufacture.

Trademark Protections

The two main trademark protections are protections against trademark infringement and trademark dilution. Trademark infringement happens when another party begins using a trademark for a product that will confuse the consumer as to who the actual manufacture is. The important thing to note here is that trademark infringement can only occur in two scenarios:

  • One party uses the identical mark on the same type of product; and
  • One party uses a similar mark on the same type of product.

For example, under the first scenario, I cannot go into the soda business and call my product Coca-Cola. Coca-Cola is a trademark used to identify the manufacturer of a specific type of soda. Under the second scenario, I cannot go into the soda business and call my product Coca-Kola. A soda with the trademark Coca-Kola may cause a likelihood of confusion as to who the manufacturer is and is prohibited.

Trademark protection and help with Watts Guerra attorney Jorge Mares

Trademark dilution is an action against a party who has blurred and/or tarnished your trademark’s good name and reputation. Under federal law, trademark dilution requires a showing that your trademark is famous. While under most state law, the trademark must have either a selling power or a distinctive quality. The distinctions between blurring and tarnishment are:

  • Blurring happens when another’s use of their trademark in a separate industry has weakened the selling power of your trademark in your industry; and
  • Tarnishment happens when your trademark is placed in a negative light and is being known not for your good moral, but their negative moral.

If you feel that someone has infringed or diluted your trademark and would like to discuss, please seek the advice of an attorney.

 

***Written by

Jorge Mares

WATTS GUERRA, LLP

Four Dominion Drive, Bldg. Three, Suite 100

San Antonio, Texas 78257

Phone: (210) 447-0500

Email: jmares@wattsguerra.com

 

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1 https://www.law.cornell.edu/wex/trademark