Hardwood Floors April/May 2019

Trademarks & Protecting Your Brand (Continued)

4 Use of ® Upon approval by the USPTO, the organization can use “®” with the trademark, which denotes that the trademark has been registered under federal trademark law. Use of ® also provides communication to other organizations that your mark is federally registered and thereby wholly protected. 5 “Police” the Use of your Mark Be sure to set up a “watch” service – such as Google Alerts – to find out who may be using the same or a similar mark. If an alert finds an individual or organization who may be using your trademark, be sure to confer with your attorney to determine whether a cease-and-desist letter should be sent to the infringing party. 6 Quality Control Use without quality control can be deemed a “naked” license (permission) or abandonment of the trademark, leaving the trademark owner with no ability to claim ownership or control the use of the trademark. One of the best ways to protect your trademark is to insist that the mark is used in exactly the way it is registered with the USPTO. Large events are very public and busy environments in which to market your organization’s services and programs. Using your brand name or logo in a different way than it is registered puts the trademark at legal risk and can be deemed “abandoned.” 7 License Agreement If you allow another person (such as a nonemployee) or business to use your trademark, have a written license agreement that gives permission – but puts controls on – the use of that trademark.

Obtaining a trademark registration plays a fundamental role in protecting business names and brands. Be proactive and knowledgeable about what trademarks your organization currently owns. Be vigilant if you believe a trademark is being used by another organization incorrectly. As always, be sure to contact your a orney should any question or issue arise about your trademark. Barbara Dunn O’Neal is a Partner with the Associations and Foundations Practice Group at Barnes & Thornburg, where she concentrates her practice in association law and meetings, travel, and hospitality law. She can be reached at 312.214.4837 or barbara.dunnoneal@btlaw.com. Matthew E. Misichko is an Associate with the Associations and Foundations Practice Group at Barnes & Thornburg. Matthew can be reached at 312.214.4827 or matt.misichko@btlaw.com.

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