Tip of the Trademark Iceberg

This episode will discuss the basics of trademarks and how they apply in sports. It is not going to cover everything but I encourage you to ask me questions when you have them, and I can research them and get back to you. A lot of the information will come straight from the USPTO Website. It is complicated and I recommend having an attorney file trademarks for you to make sure you don’t make a common mistake.

What is a trademark?

A trademark is a subsection of intellectual property. It is simply, a “recognizable sign, design, or expression” which identifies products or services of a particular source from those of others. Think popular logos. DallasCowboys’ Star. Interlocked N & Y for both the Mets and Yankees. It is pretty common for all logos to have a trademark either registered of not.

Why do we have trademarks?

Equitable protection of someone’s work. Also, as an identifier of goods or services on the market. We do not want to have marketplace confusion among purchasers in commerce. Some professionals would argue that they do not help the economy in general.

Why get a trademark?

Once a trademark is put into the stream of commerce it has certain rights (limited). This is known as a common law trademark. Those rights are limited and could be costly to protect if someone does infringe. Once a trademark is federally filed, you get certain rights over the rest of the country. Some of which include:

Puts you in the USPTO database for others to not get close to your trademark

Speeds up any lawsuits or potential suits (i have a trademark- back off)

Helps with international business (Customs agency will help keep stuff out and other countries will rely on the US database for your application). Some countries are first to register. US is first to use.

Do you have to register a trademark? No. Should you? Yes.

What is the difference between the little TM and the R in a circle on a logo?

All trademarks once created can have the small TM on them but the circled R is only for federally registered trademarks.

The Lantham Act is the primary law surrounding trademarks. The most common sections from that are 42 (Remedies) and 43 (Customer ConfusionStandard).

How do you get one?

Trademarks may be registered online. The USPTO charges a $275 fee for online trademark applications. The process takes about 6 months from initial application to final registration. It is a general practice to hire a trademark lawyer to file the application on behalf of the future owner.

If the Trademark Examiner identifies problems with the applications, the applicant will be sent a “preliminary rejection.” The applicant will then have6 months to file a reply with arguments in favor of her trademark application.If the Trademark Examiner is persuaded by the reply arguments, the application will be granted registration. If not, a “final rejection” will be issued. When an application is allowed, it moves on to “publication” in the TrademarkOfficial Gazette. Once published, there is a 30-day opportunity for other companies to appeal the registration. If no appeal is filed, the registration is finally issued.