IP Enforcement: Trademark Registrations

Continental Enterprises, Intellectual Property Enforcement, Trademark Registrations

We plan to introduce a new product or service. What can we do to ensure our intellectual property is protected?

Although common law trademark rights can be acquired through a period of extended use, relying solely on these rights can hinder the growth and protection of your brand. Registering your trademarks both domestically and abroad is essential to the development of your intellectual property ("IP") portfolio. Proper registrations provide the foundation for efficient and effective management, enforcement and licensing of your brand. Continental Enterprises ("Continental") can assist with the registration process as well as developing a registration strategy and integrating it into the long-term growth and expansion of your company.

STATE trademarks can be obtained quickly and inexpensively. This is especially useful when a federal registration has not been obtained and you are confronting an infringement problem that has already metastasized. In these situations, you need to protect your IP swiftly and efficiently. State registrations also play a role in some of the unique strategies that Continental can develop for you. For example, registrations in just a few states can make it extremely difficult for national distributors of infringing merchandise to sell their goods. Additionally, a simply state trademark registration activates many state criminal statutes, some of which even have heightened penalties if the mark is registered within their state.

FEDERAL trademark registrations are the gold standard. They provide nationwide coverage and are the most likely to put others on notice of your rights. We recommend you register all major components of your brand identity both individually at the federal level. This can include not only logos and word marks but also all of the other elements that distinguish your products from others and create a connection between you and your customers such as sounds, colors and the distinctive designs and three-dimensional shapes of your products.

FOREIGN trademark laws are quite different from those in the U.S. Many foreign countries, most notably China, only recognize registered trademarks and often follow a “first to file rule.” This means that if another party registers your trademark before you then your rights can be severely impaired. While initial registrations can be relatively inexpensive, attempting to retrieve them from predatory infringers can be quite costly. Fortunately, in most of these countries there is only an "intent to use" requirement in order for registration to take place. We encourage trademark registration in any country where you feel infringing merchandise is likely to be manufactured or significantly compete with your market share. This will ensure that whenever it is detected, you can aggressively enforce your IP rights throughout the world and attack foreign counterfeiting.

It is equally important to register trademarks in the appropriate classes, especially in countries that follow strict registration requirements. A registration in the incorrect class is the same as having no registration at all. For example, an IP owner that registers its trademark in the class for jelly may be surprised to find that infringers can still use that same trademark for jam.

The biggest pitfall when developing and protecting your IP throughout the world is overlooking foreign trademark registration. Continental can provide insightful guidance in effectively protecting your IP throughout the world by using trademark registrations to your advantage. In creating a registration strategy, Continental’s staff will work closely with you to ensure that your registrations will protect your brand and products to the greatest extent possible.