U.S. Trademark Basics for In-House Counsel


The basic difference between a law-firm and an in-house-counsel is that in-house counsels are expected to act proactively before matters escalate into a crisis. Thus, it is very important for them to keep themselves informed with regulatory and statutory norms of IP. Like many other intangible assets, trademarks are also assets and it needs to be created, protected and defended throughout the life, and if you are an in-house counsel the responsibilities get doubled.  Trademark Basics

Since, in-house counsels are under tremendous pressure to manage spending of the company, the safest route would be to do things as per the statutory rules of the jurisprudence. This article is an attempt to help in-house counsels remain informed about the U.S trademark law.

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What trademarks are and why it matters

Distinctive designs, words, graphics, logo, symbols, or any combination thereof that uniquely identifies a firm and/or its goods or services is a trademark.  A unique trademark gives guarantee to the users/subscribers that the product they are buying is genuine and coming from the original source. From owner’s point of view, a trademark can be defined as a legal tool to differentiate their products from its competitors. A trademark matters because it gives the owner a tool to differentiate their products from its competitors. Not only that, but it also helps them create a brand in long run. Apart from this, trademarks can also be used for various collateral purposes. There are many other benefits that a trademark owner can avail and these are only a few.  Trademark Basics

Why do trademark search?

The best way to ensure that you are picking a right mark is by doing a full trademark search, wherein, not only we search relevant trademark databases but also do common law searches to find similar and closely similar marks that may jeopardize registrability of that mark. A full and comprehensive trademark search also helps the applicant determine the degree of protection that they can enjoy with that mark.  Trademark Basics

Benefits of registering your trademarks

Though it is not mandatory for brand owners to register their marks but if registered it can offer plenty of benefits that every business owner would like. Some of the important benefits that a registered trademark can offer to its owners are:

  • Protects the mark against confusingly similar marks and/or closely similar marks Trademark Basics
  • Owners can distinguish their products/services from others  Trademark Basics
  • Owners can create a brand value in the market  Trademark Basics
  • Offers nationwide protection to that mark
  • In case of litigation, a registered mark overrides common law and thus increase the chances of winning
  • Can be used as an evidence of validity and exclusive ownership
  • Grants the right to use the ® symbol
  • Grants the right to sue in federal court
  • Makes owner entitled to significant monetary recovery
  • Provides a basis for foreign registrations

Doing monitoring of trademarks

Once the mark is registered all is not done and there is an obligation on owner’s part to monitor them continuously for any kind of unfair uses. Simply put, a continuous trademark monitoring is important to gain maximum benefits from a trademark and it should be done throughout the year and round the clock. With the advent of e-commerce and online marketing, trademark monitoring has become even more important. There are various ways to implement an effective trademark monitoring campaign, like checking trademark databases for new registration, scanning pay per click advertisements platforms, checking competitor’s source codes, etc.  Trademark Basics


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