An Introduction to Trademarks

Although many articles have been written about what trademarks are or why you would want one, I’d like to devote the majority of this blog to legal issues in esports and branding rights. I’d like to examine trademarks from several different perspectives, so to build upon a solid foundation, my first post will simply be some ground rules about what a trademark gets you.

Photo by William Creswell, www.flickr.com/photos/crackdog/8504943759/

To begin with, there are two types of trademarks: common law trademarks and registered trademarks.

Common law trademarks are rights from the use of your own mark. That is to say, if you use a mark (a symbol, words, or both) to distinguish your own products or services from someone else’s products or services, you have a common law right in that mark and can use the “TM” symbol after your mark. Since there is no registration requirement, a common law trademark is “free,” but grants you only limited rights in your mark — you only have rights in the geographic area where you use the mark in commerce, and while you can sue someone who is using your trademark, there is less power to obtain damages.

Registered trademarks are trademarks that are registered with the government. A registered mark lets you use the ® symbol after your trademark. There is a filing fee, and generally a small fee if an attorney helps you register the mark, but there are a number of benefits that go beyond the protection that a common law trademark gives you.

• Registering your mark gives other people constructive notice that you’ve already registered the mark. Anyone can conduct a search of federally registered marks at tmsearch.uspto.gov
• Your rights are nationwide, rather than only in the area you are currently using the mark. These first and second points work together to prevent another person or company from registering the same mark somewhere else in the US, and preventing you from expanding beyond the area you’re already using the mark.
• A registered mark lets you file a lawsuit in Federal Court, rather than just in State Court. Because your mark is registered, you start from the position that your trademark is valid, and the other side has to prove otherwise — this is known as the “presumption of validity.” Suing under a registered trademark gives you an easier time of getting monetary damages, or even attorneys fees if the other party was using your trademark in bad faith.
• A registered mark lets you block imported goods that also use the same mark.
• Registered trademarks are more valuable. Both common law and registered trademarks have value, but since registered trademarks are wider in scope and have deeper protections, they generally are more valuable than common law marks.
• Registration gives you more leverage in a domain name fight. The UDRP (Uniform Dispute Resolution Procedure) judges often look very favorably at a registered trademark, especially when the non-registered party has acted in bad faith.

While these are the major points that I feel should be touched on, this is by no means a comprehensive look at all trademarks or all areas where trademarks are useful or important. If you’d like to know more, please leave a comment!