Business Owners Trademark Your Brand!: New Law Helps Unregistered Tradmark Owners in the Fight to Protect Their Brand

Get your mark trademarked!! A lot of start-up companies wait to trademark their brand name and/ or logo for monetary reasons or out of sheer ignorance. When trouble arises they hope that state common law protections will be sufficient to protect the time, money and energy invested into creating a recognizable brand. This is true to an extent but the protections are not as clear-cut nor as strong for trademarks not federally registered.

What happens if someone else tries to use your mark or something very similar to it? Well, if they get a federal trademark before you, you might be in some trouble.

Section 43(c)(6) of the Lanham Act, 15 U.S.C. 1125(c)(6) included a complete bar for state dilution claims brought against federally registered marks. Which means that if someone federally registered your mark before you and you tried to do something about it based on a dilution claim (they are weakening the strength of your mark) you would have very hard time bringing a claim not to mention proving prior ownership if you get to a proceeding.

President Obama on October 5, 2012, signed legislation (H.R. 6215) that restores the limitation of the federal registration defense to trademark dilution claims based on state law only.  This will make it easier to bring a dilution claim against someone attempting to steal your mark or gain an advantage by confusing consumers using your mark.  The House Report (H. Rept. 112-647) for H.R. 6215 points out that Congress could not have intended that federal registration could serve to bar all dilution claims since that result would make it difficult to cancel a diluting mark that is registered. That would only encourage illegitimate mark holders to register diluting marks, and would force legitimate mark holders to expend greater resources monitoring registrations as well as other marks being used in commerce, the Report noted.

Signed Legislation

H.R. 6215 restores the intent of the House-passed version of 15 U.S.C. 1125(c)(6) as follows:

(c)(6) The ownership by a person of a valid registration … shall be a complete bar to an action against that person, with respect to that mark, that —

(A) is brought by another person under the common law or a statute of a State; and

(B) (i) seeks to prevent dilution by blurring or dilution by tarnishment; or

(ii) asserts any claim of actual or likely damage or harm to the distinctiveness or
reputation of a mark, label, or form of advertisement.’.

The need for this legislation was recently confirmed by a ruling of the Trademark Trial and Appeal Board in the cancellation action in Academy of Motion Picture Arts and Sciences v. Alliance of Professionals and Consultants, Inc., TTAB, Canc. No. 95055081, 9/24/2012.  The TTAB dismissed the action, finding that the language of the 2006 amendment barred a federal dilution claim against a federally registered mark.
Although this new law will help trademark owners without a federal registration protect their marks from infringers/illegitimate mark holders it does not mean that a legitimate trademark holder will be able to defend their mark. This only allows for a greater opportunity to appear in court. Then a legitimate mark holder must start the uphill battle to prove that they are the initial and legitimate mark holder. Trademark protections work better for entities or individuals who have proactively registered their mark(s) with the USPTO. I encourage every business owner, budding business owner, idealist, or individual with a cool mark to register your trademark. Protect your investment. Additionally, seek the help of a trademark attorney.  These applications seem easy but unless your mark is completely nonsensical and a new word you are likely to experience trouble registering the mark.

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