A trademark is a recognizable name, marking, or term that an entity can by law use to identify itself and its products. The most common examples of trademarks are the names of products, services, or businesses. Nearly all businesses, associations, not-for-profits, and other entities have at least one trademark (also known as a “mark”) (google “surprising trademarks” for an amusing survey of things you didn’t know were, or could be, trademarked). Trademarks are a ubiquitous feature of the marketplace and constitute valuable business property. Much the way owners of valuable real property can exclude others from their physical locations through the law of trespass, trademark owners can exclude others from the use of their marks through the law of infringement.

The most important preemptive step to protect a trademark and allow an owner to benefit from the law of infringement is registration with the federal government or with New York State. Registration can also guard against unfair competition and reputational harm. Not all trademarks are registered. Many owners don’t register their trademarks. There is no requirement to do so and in some circumstances it wouldn’t accomplish much. Your local pizzeria may not have “Jim’s Pizza” as a registered trademark, but that doesn’t mean you can open a “Jim’s Pizza” across the street and think that there’s nothing they can do about it. Yet, registration of a trademark can provide many valuable benefits.

Registration makes it much easier for owners to vindicate their rights in court. It eliminates or eases the necessity of proving various aspects of an infringement claim. NYS and the federal government have parallel registration systems and owners are free to file in either or both.

Owners who opt to have their marks federally registered enjoy a wider array of benefits, such as the right to exclude others from using the mark throughout the United States. Federally registered trademark owners can bring infringement claims in federal court and are often able to recover treble damages and attorneys’ fees from infringers. They can also styme knockoff importers by recording the registered marks with US Customs & Border Protection and can file for trademark protection outside the US.

Registered owners also get the benefit of the ® symbol, which puts potential infringers on notice that a given mark is a protected trademark. The ® symbol also staves off “genericide,” the process by which brand names become so synonymous with a category of product or service that it ceases to have trademark protection and the former trademark becomes unenforceable. Kleenex and escalator are well-known examples of former trademarks that are now used as common nouns. My use of “google” as a common verb in the first paragraph of this article contributed to the genericide of Google, LLC’s trademarked search engine, Google®.

Trademark owners who don’t meet the “use in commerce” requirement necessary for federal registration or who don’t think they need federal protection can also file for trademark protection with NYS. The requirements and process in NYS is cheaper, quicker, and less onerous than its federal counterpart. The primary drawback of state registration, as opposed to federal, is that it doesn’t provide protection against infringers outside the NYS. It also doesn’t convey the wider array of benefits garnered through federal registration.

Owners that operate only within NYS who aren’t worried about having their marks ripped-off out of the state often forego federal registration. Federal registration can obviate the need for NYS registration, but not always. One important consideration mark owners should be aware of is that federal registration preempts state registration. Meaning that just because an owner was the first to register a mark in NYS, doesn’t mean they’re immune from a lawsuit.

Whether to register a trademark and where to do it is based upon each owner and each mark and should be evaluated on an individualized basis. Owners can benefit from the advice of experienced legal counsel when making this determination. Please feel free to reach out to attorney Christopher Baiamonte at the Wladis Law Firm at (315) 445-1700 with questions regarding trademark rights or registrations.

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Christopher J. Baiamonte

Mr. Baiamonte concentrates his practice primarily on civil litigation. He counsels individual, corporate, and municipal clients on resolving disputes ranging from environmental liability to shareholders rights to creditor–debtor suits. He also works with clients to navigate various state and federal regulations relating to areas such as environmental protection, employment, and civil rights.

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