By Eric D. Morton
When considering protecting trademarks, most people first ask about a trademark registration. I often meet business owners who assume that if a business can obtain a registration with the U.S. Patent and Trademark Office, or a state registration, then a trademark is protected. That is not completely true. Even assuming you have a trademark that can be registered, a registration does not give you unqualified protection of your mark. Yes, you can acquire important presumptions and remedies with a trademark registration. And a registration can also deter competing businesses from using your mark. But a registration does not give unqualified protection to the trademark owner.
Trademark rights are gained through use. The more a trademark is used, the stronger the rights. The more advertising of goods or services under a trademark, and the more sales of those goods or services, the more the consuming public will recognize the trademark and associate it with the owner and the owner’s goods or services. The stronger the association, the stronger the trademark rights.
One goal of registration is to prevent infringement. However, infringement occurs. To enforce its rights, the trademark owner must do more than simply prove that it has a registration. Invariably, the defendant accused of infringement will test the trademark rights of the trademark owner. The defendant will request discovery of documents and information regarding the use of the trademark. Typically, a defendant will ask for copies of advertising, dates of advertising, screen shots of websites, copies of brochures, photos of products with the trademark, tags attached to products, and similar items. The defendant will also ask for the amount of money spent on advertising and promotion of goods and services using the trademark. The amount of sales of products sold under the trademark will also be discovered.
The defendant in infringement cases will seek to prove that the use of the trademark was limited and the trademark’s public recognition is weak. Information and documents relating to the advertising and sale of the trademark during the entire time that it was in use can be discovered. In fact, I have represented clients in trademark disputes who were questioned about sales figures from 25 years ago!
What to do?
I always suggest that business owners make a file for each trademark they own and save the following:
- Copies of advertising. Save pdfs of printed advertising or brochures.
- Screen shots of websites and copies of any digital advertising.
- Photos of products with the trademark on the product or on tags attached to the product.
- Records of advertising spends for each year the trademark is in use.
- Records of sales of products or services sold under the trademark for each year in use.
These records are vital to proving the strength of a trademark and the legitimacy of its registration. A party to a trademark infringement lawsuit–or a cancellation or opposition proceeding before the USPTO–who can quickly and fully produce such records has a big advantage. Having such records can mean a quick end to such legal actions.
If you would like help on what information and documents to store, or if you have any questions about trademarks, please contact us.
Eric D. Morton, is the principal attorney of Clear Sky Law Group. He works with clients in his Carlsbad and Oakland offices. Eric has filed hundreds of trademark applications and has represented clients in trademark actions. Eric is a former adjunct professor at California Western, School of Law. He taught trademark law and supervised the school’s trademark clinic. Eric can be reached at emorton@clearskylaw.com, and 510-556-0367 or 760-722-6582.
