A trademark grants the right to exclusively use a brand name, design, slogan, sound, smell or any other symbol used to identify and market goods and services. Examples of trademarks include the Calvin Klein name and the Yves Saint Laurent “YSL” logo. Trademarks are of the utmost importance in spreading brand awareness.
- Our designer’s name was used as a trademark. If the designer leaves our company, who owns the trademark? This will depend on the type of contract that was made between the designer and your company. Some designers retain the right to their name while licensing their name to the company on a royalty basis. Other companies will buy the name from the designer and prohibit the designer from using their name on future products. Either way, it is smart to have a contract that states who owns the trademark rights in case a designer decides to leave your company.
- I sell T-shirts that parody name brands. I thought parody was protected, but now I’m being sued. Why? While parody is protected, a problem can arise if there is a likelihood of confusion as to the source of the goods. For instance, if a consumer would think that the t-shirt was actually produced by the brand that you are parodying, you may not be protected. If you are being sued, seek legal counsel to evaluate your individual situation.
- How do I know if a mark is already taken? Although not a requirement, an applicant may choose to conduct either a preliminary scan or a full U.S. availability search for conflicting marks prior to applying with the USPTO.
- Do I have to begin using a trademark before I can apply for federal registration? No. An applicant may apply for federal registration in three principal ways: (1) an applicant who has already commenced using a mark in commerce may file based on that use (a "use" application); (2) an applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). The applicant will have to lawfully use the mark in commerce and submit an allegation of use to the Trademark Office before the Trademark Office will register the mark; and (3) under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
- I live outside the United States; can I file for federal registration? Yes. Applicants not living in the United States must designate in writing the name and address of a domestic representative – i.e., a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." This person will receive all communications from the USPTO unless the applicant is represented by an attorney in the United States.
- I went online to buy the domain for my name and it was already taken. How can somebody else own my personal name? Do I have any recourse if my name is well known? Someone else can legally own the domain name for your personal name or your company's name. You may have recourse if your name is well known, especially in California which has expanded rights for likenesses and names of well-known persons. You also may be able to get the domain name transferred to you by negotiating with the domain owner through your attorney.
- What are trademark licensing agreements? Trademark licensing agreements are one of the most common IP transactions in the fashion industry. Often a licensor (owner of a trademark) will contract with a licensee (another company) to manufacture and market products using the licensor’s trademark. This benefits a licensor by increasing profits and expanding its brand into new markets, while giving the licensee a pre-existing customer base. There are many important terms to a licensing agreement, including products covered, exclusivity, specific trademarks, duration and geographic region, compensation, marketing and sales requirements, and quality control. It is important to speak with an experienced IP attorney to find out how to protect your assets.
- Someone is selling fake versions of my product. They claim they are within their rights because they have made minor changes to the brand name and look of the product. Do I have a case? In this scenario, you may raise one or more claims including a claim of trademark infringement. A basis of trademark law is that a mark is used to identify the source of the goods and if someone is using a trademark similar to yours, such that a consumer would be confused as to the source of the goods, you have a cause of action. This can apply to a brand name or a logo or design. For instance, someone selling "Rollex" watches will most likely be considered by the courts to be infringing. If your trademark is deemed to be "famous" you may have a case for dilution of your trademark regardless of whether there is any likelihood for confusion.
- Someone is infringing my trademark. Is there any danger if I ignore them? There are several reasons to immediately seek legal counsel regarding infringers. If you wait too long to sue, you may lose your right to sue because your delay will be seen as a contributing factor in increasing the amount of harm. Courts may also find that you abandoned your trademark by not enforcing its use. Delay can also harm your brand by allowing an inferior product damage the reputation of your trademark and to compete with your sales.
- Will my U.S. trademark registration protect me in other countries? No. Trademark protection is region specific. For each country you wish to enforce your trademark, you will need to apply for a trademark under their laws.
- Is it illegal for others to import items into the U.S. with my trademark without my consent? Yes, it is illegal. Customs will protect trademarks registered in the United States. To obtain protection, a trademark owner must register their trademark with the Customs and Border Protection. Customs may also protect against importation of validly trademarked goods if they were not meant for sale in the United States. The exception to this is that it is legal for individual users to bring products with your trademark into the United States for their own personal use.
- My company never formally trademarked our name, but we’ve been using it for 50 years and everybody knows us by it. Now somebody else trademarked it and is using our reputation to build his business. Do we have any recourse or are we out of luck? You have acquired rights in the geographic area that your trademark has been used in. For instance, if you've operated David’s Designs in the Los Angeles area, you may be able to prevent someone else from opening a David’s Designs in Hollywood, but not a David’s Designs in New York City. It would be a good idea to file a federal trademark showing the date of your first use. One possibility may be an agreement between the two parties where you cannot expand your business outside of the geographic area that you are in and they agree not to infringe within that area.