So you want to apply for a federal trademark to protect your brand. How does it work? Does it cover all use of the brand? These are a sampling of the questions I receive from entrepreneur’s and business owners looking to protect their brands. Securing a federal trademark is a complicated but worthwhile process. The Intellectual Property attorneys at Assouline & Berlowe take the time to explain the process to the brand owner so they understand what to expect and how to maximize their protection.
When applying for a federal trademark, you must pick the class of goods/services that your brand covers based on your existing use, or expected use, of the brand in commerce. For example, you own and operate a retail space where apparel is sold and you want to protect the brand name of the retail space (the name of the store). You may want to seek protection in a services based trademark class for the bran associated with the retail space. If the apparel sold at the retail space, the products, use the same brand, you may want to seek protection in a second product based class for the applicable apparel. You can seek federal trademark protection in multiple classes of goods/services in the same application. Generally, the scope of your federal protection is limited to the class of good/services in your federal trademark registration. Common law rights are handled differently.
In a recently released opinion, the Eleventh Circuit Court of Appeals held that a federal trademark registrant’s services based brand had extended protection related to goods. Savannah College of Art & Design, Inc. v Sportswear, Inc., 2017 U.S. App. LEXIS 19168 (11th Cir. Oct. 3, 2017). The Court relied on a prior trademark case that extended protection of federally registered service marks to goods, despite little rational as to the basis for the expansion. The Sportswear case stated that a federal registered service mark does not have to register that mark for goods to “establish the unrestricted validity and scope of the service mark, or to protect against another’s allegedly infringing of that mark on goods.” Id. at *15. The registrant still needs to show the alleged infringer’s use of its brand is creating consumer confusion as to the source or origin of the brand. Notably, the Court did not discuss the “natural zone of expansion” doctrine, which can be used be extend a trademark owner’s rights into a new product line that is a natural expansion of their prior use.
While the Sportswear case helps trademark owners for services assert their rights for related goods, the optimal method of protection is registering the brand in the class from the outset. As a trademark applicant, you can seek registration based on your actual use of the brand in a services field, while also applying for the same brand in a goods classes based upon your bona intent to use the brand in business in the future. A well thought out branding strategy may include preserving your rights in a field that you plan to expand into. While the trademark cannot register until you begin use of the brand in the applicable class, you can effectively preserve your place in line for up to three years (extending use in 6 month intervals) while you are preparing to use the brand in commerce. Utilizing a trademark attorney helps you develop a branding strategy to maximize your protection now and for the future. Don’t forget, a trademark is an asset and can have immense value. Just ask Apple and Google, whose brands are estimated to be worth $170B and $101B by Forbes, respectively.
For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below. Follow him on Twitter @InventionAtty.
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