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Protecting Your Brand Through Trademark Registration

Your brand/company name and product names are essential components of your marketing strategy.  As part of developing your company, it is likely that you have put a substantial investment of both time and money in crafting the name, developing a logo and creating a brand identity.  At various points within this process, and ideally as early as possible, it is important to consult with an attorney to advise you on the best way to protect your brand in the marketplace.  Specifically, having a federally-registered trademark with the U.S. Patent and Trademark Office (USPTO) can help you to prevent others from using confusingly similar marks and can also help you defend your brand should another company claim that you are infringing on its mark.

 What is a Trademark?

“A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term ‘trademark’ is often used to refer to both trademarks and service marks.”[1]

 Benefits of Trademark Registration

  • Ability to bring suit in federal court
  • Can use ®  – denoting registration
  • Registration can be used by the examining attorney when it is reviewing applications for third parties
  • Provides constructive notice of ownership of the mark and exclusive right to use the mark
  • Basis to obtain registration in foreign countries
  • Remedies (Primary Register only)
    • Can include lost profits, monetary damages, litigation costs and attorney’s fees

 Registration Process[2]

Step 1: Identify your mark format: a standard character mark, a stylized/design mark, or a sound mark.

Step 2: Identify clearly the precise goods and/or services to which the mark will apply.

Step 3: Search the USPTO database to determine whether anyone is already claiming trademark rights in a particular mark through a federal registration.

Step 4: Identify the proper “basis” for filing a trademark application.

Step 5: File the application online through the Trademark Electronic Application System.  View trademark fee information.  REMINDERS:  (1) The application fee is a processing fee that is not refunded, even if ultimately no registration certificate issues; that, is, not all applications result in registrations; and (2) All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone number, e-mail address, and street address.

Step 8: USPTO Reviews Application

Step 9: USPTO Issues Letter (Office Action)

Step 10: Applicant Timely Responds to Letter

Step 11: USPTO Publishes Mark

Step 12: Registration Certificate Issues for Applications Based on Use, Foreign Registrations, and International Registrations

Step 13: Notice of Allowance Issues for Marks Based on an Intent-to-Use the Mark

Step 14: Applicant Files Timely Statement of Use or Extension Request

Step 15: Applicant Does Not File Timely Statement of Use or Extension Request

Step 16: USPTO Reviews Statement of Use

Step 17: Registration Certificate Issues

Step 18: Protect Your Mark with Proper Use & Enforcement

Trademarks & Supplements

It’s crucial to conduct a thorough search of existing trademarks before filing your own mark.  Failure to conduct such a search can result in needless expenses and refusal from the USPTO based on section 2(d) – likelihood of confusion with another mark.  Even if your mark makes it past the examining attorney, it can be opposed by another company before the mark is registered.  Once your trademark is registered, however, it will act as both a sword and a shield by allowing you to prevent others from using the mark and defending your brand if challenged by another company.  In addition, a trademark registration allows you to bring suit for trademark infringement in federal court.

From examples such as the sale of counterfeit products to unwitting consumers to the false claims of internet marketers that their products are endorsed by Dr. Oz, intellectual property disputes are increasingly common in the dietary supplement industry.  In the ever-growing dietary supplement landscape, it is more important than ever to protect your brand and product names, slogans, logos, etc. to ensure that you keep your competitive edge in the marketplace.

As always, if you are in need of legal counsel to file trademark applications with the USPTO or to ensure that you are best complying with all current and reasonably anticipated future regulations in the dietary supplement industry, call us anytime at 516-294-0300.