By Andrew Smith
In a crowded and competitive marketplace, it is now more important than ever for architecture businesses to deliver a consistent and integrated brand message. Trademarks, when coupled with recent advances in marketing and mobile technology, offer a practical and low cost tool for professionals in the field of architecture to protect their brand, capitalize on good will, distinguish themselves from their competitors and expand into new markets. The following contains a user-friendly overview on trademarks that outlines the benefits associated with obtaining a federal registration with the United States Patent and Trademark Office (USPTO).
Trademarks 101
First, what is a trademark? By definition, a trademark is any word, name, symbol or device used to identify and distinguish goods or services, including a unique product or service, from those manufactured, sold or rendered by others, and to indicate the source of those goods or services. While a trademark (referred to as a “service mark” when used with services) typically takes the form of a combination of words and/or symbols, the definition is expansive in nature and can include, for example, colors, scents, sounds, motions and shapes. Simply put, a trademark is anything that conveys to consumers the source of your goods or services and serves to distinguish them from others in the marketplace.
Although trademarks come in a variety of forms, not all trademarks are created equal; strong marks have a greater scope of protection than weak marks. The strength attributable to a trademark is best visualized as a sliding scale with strong marks being fanciful (KODAK for film) and arbitrary (APPLE for computers) on one side and descriptive/laudatory (BEST ARCHITECTURE SERVICES) and generic marks (APPLE for apples) on the other. The investment you make in using and protecting your mark can also contribute to its strength. For example, such well known marks as Google®, Coca-Cola® and Nike® are strong marks not only because the nature of the mark, but also because of the extensive resources that each company has invested into the marketing, advertisement and enforcement of their trademark rights.
Acquiring Trademark Rights
There are two routes by which a party can obtain enforceable trademark rights in the United States. First, a party acquires “common law rights” simply by using a mark in conjunction with goods and/or services in the marketplace. The good news is that no fee or formal registration is required to obtain enforceable common law trademark rights. However, the bad news is that trademark rights acquired under common law are limited to the geographic areas in which the business has distributed goods or rendered services under a particular mark. As a consequence, an architecture businesses relying on common law rights may not be able to enforce its trademark against subsequent users outside its zone of actual use and may be prohibited from expanding into new markets to the extent a similar mark is already being used in that area.
The second, and far more preferable, route to obtain rights in a mark or design is to file a federal trademark application with the USPTO. A federal trademark registration offers a low cost (filing fees for applications start as low as $225/class) and effective means for businesses to protect their brand. The following is a non-exhaustive list of the benefits provided by federal registration:
Nationwide Rights. A federal registration grants a trademark holder the presumptive right to use and enforce its mark anywhere in the United States for the designated goods and/or services as of the filing date of the application.
Constructive Notice. Federal registrations are publically available on the USPTO database and provide constructive notice of ownership in a mark and alerts potential infringers of the liability associated with using the same or similar mark.
Federal Jurisdiction. An owner of a federal registration can enforce its rights in federal court where judges are often more familiar with trademark matters and, if successful, may recover (1) any damages sustained, (2) the infringer’s profits and (3) the costs of the action.
Transferable Property. A federal registration is a tangible asset that may be bought, sold, licensed, used as collateral and shown to prospective investors.
Incontestability Status. A federal trademark becomes “incontestable” upon reaching its fifth anniversary of registration and conclusively establishes ownership in the name of the trademark holder. Therefore, an entity with prior common law rights will be barred from challenging an incontestable federal registration based on its prior usage, and its business will be frozen in the geographic area of use as of filing date of the underlying application.
The ability to obtain a federal trademark registration will depend on a number of factors, such as the number and nature of similar marks already on the USPTO register, and those interested should contact an attorney familiar with trademark law to determine whether federal protection is available.
As the architecture industry continues to expand, the most successful professionals will be those that adopt a distinctive mark for their services and take a proactive approach to protecting their brand. Federal registration offers immense benefits and a cost effective means to capitalize on consumer good will and should be integrated into any business looking to expand into new markets, whether across the street or across the country.
This article and its contents are for informational purposes only and do not constitute legal or professional advice.
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Andrew Smith is an attorney at Holley & Menker, P.A., a boutique firm specializing in all aspects of trademark representation including counseling, clearance, prosecution and enforcement.
(Return to the cover of the 2016 PM Digest: Intellectual Property)