You have a valuable trademark that you use in your business.  How do you protect it?  (“Protecting a trademark” means being able to stop other from using that trademark or a confusingly similar trademark.)

There are several things that you can do to protect your trademark.  You should always use your trademark in a consistent manner.  If the trademark incorporates words, use the same words in the same way.  Changing the spelling or leaving out certain words can weaken your trademark.  Altering design elements, if any, can also weaken your mark.

If you qualify, you can also obtain a trademark registration, either at the state level or a federal trademark registration.  This expands the scope of your trademark rights and creates certain presumptions in your favor if you need to go to court.

You should always identify your trademark as a trademark.  This is done by using the ™ or SM symbol (if your trademark does not have a federal registration) or the ® symbol (if your trademark is federally registered).  Identification takes away an infringer’s defense of not knowing it was your trademark.

You also need to “police your trademark”.  This means, you need to check to see if others are using your trademark or a confusingly similar trademark.  If you find someone, you need to tell them to stop (typically by sending a “cease and desist” letter).  If your trademark is federally registered, you should oppose any attempts by others to register a confusingly similar trademark.  Finally, if infringement persists, you could bring a lawsuit against the infringer, or try to settle the matter.  Failure to do these things to protect your trademark may be deemed an abandonment of the trademark, with a loss of rights.

Another thing to do to protect your trademark is to be careful how others use that trademark with your permission.  If you let others use your trademark, you need to control that use to make sure that the quality of the goods and/or services offered using your trademark are at least as good as the quality of the goods and/or services for which you use your trademark.  This is most typical in a franchising relationship.

Anthony A. Pellegrini, Attorney at Law, Rudman Winchell
Anthony Pellegrini, Esq
Rudman Winchell

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