Introduction

This is the second in a series of articles about legal devices for protecting your brands.

In the first piece, we discussed proper brand use. (See, Cyrlin, Alan. “How to Properly Use Your Brands -- An Hotelier's Legal Guide to Maximizing Brand Value,” found at www.hospitalitynet.org/news/4029057.html).

This month, we focus on registering your brands with the federal government.

In the United States, hotels gain a certain level of legal protection by simply using their brands. Nevertheless, each year businesses take the additional step of filing applications with the Patent and Trademark Office, in Washington, D.C., requesting “registration.”

More than 250,000 applications are filed annually. (“Performance and Accountability Report Fiscal Year 2005,” found at www.uspto.gov/web/offices/com/annual/2005/ index.html).

Why? Because a federally registered brand enjoys far-reaching legal and business advantages over a brand that is unregistered. In fact, registration has been used for over 100 years in the United States to gain legal protections.

How to Begin

The first step is usually a consultation with your trademark attorney. During your consultation, you will want to explain the level of protection you want to achieve and the specific brands you want to protect. Your attorney will review the brands, your use of the brands, and explain in more detail the process. Additionally, your attorney may recommend that you commission a comprehensive search to see if someone else is using the same or a confusingly similar brand. Together you can discuss your options.

Your attorney also may explain the different types of brands. A brand may be classified as either a “trademark” or “service mark.” A trademark is a word, name, slogan or symbol used to identify and distinguish goods and to indicate the source of the goods. A service mark is the same thing as a trademark except that it indicates the source of one’s service. A hotel or resort’s services, such as providing lodging, are generally considered “service marks.” But if the brand is used to identify the source of a product, such as a bathrobe, the brand will be defined as a “trademark.”

The Benefits

Registering a mark can be expensive. Nevertheless, hotels and resorts may find the expense to be a worthwhile investment because of the benefits provided by a federal registration. These include:

1. Nationwide Protection. The registration secures nationwide rights. In the U.S. you acquire rights by being the first to actually USE the mark (e.g., sell products or services with the mark). Therefore, if someone begins using “your” mark in a particular state, they can claim that they own the mark (at least in that state). However, a federal registration creates a legal presumption of ownership nationwide. Without a registration, your trademark rights may be limited to the geographic regions (e.g., the state of New York) and goods/services in which you first used the trademark. Since it takes several years for a hotel to expand nationwide, it is imperative that hotels secure nationwide rights to use their brands at the outset. It is also imperative that a hotel gains nationwide protection before it actually begins using the brand. Both of these objectives can be accomplished by filing a successful application with the U.S. Patent and Trademark Office.
2. Public Notice. The registration provides public notice of your claim of ownership to the mark, and deters others from using the mark.
3. Valuable Asset. The registration becomes a business asset. In fact, the single most valuable asset in the world is the COCA-COLA® registered trademark, estimated to be worth more than $67.5 billion. (Business Week, August 1, 2005 and Interbrand Corp.) The Financial Times has reported that “Hilton” is the most valuable hotel brand, purportedly worth $1.3 billion. (Daneshku, Scheherazade, “BRANDING: Awareness becomes the name of the game,” FT.com Financial Times, found at specials.ft.com).
4. Immortality. Unlike other property, a federal registration can last forever so long as you continue to use, maintain and renew it. Some of the oldest existing registrations for hotel services are “Holiday Inn” (registered in 1954); “Caribe Hilton” (registered in 1955); and “Ramada Inn” (registered in 1961). (Source: United States Patent and Trademark Office).
5. Legal Presumptions. The registration creates a legal presumption that your mark is valid, that you are its owner, and you have the exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate of registration.
6. Licensing. The registration makes it easier for a hotel to license its marks – allowing hotels to receive royalties whenever its licensees use their brands.
7. Prestige. The registration gives you the right to use the federal registration symbol ® – adding prestige to your hotel or resort.
8. International Protection. You can leverage your U.S. registration to obtain registrations in foreign countries.
9. Lawsuit Rights. The registration gives you the right to recover statutory damages against an infringer, which can be as much as $1 million per mark. It also gives you the right to sue in federal court.
10. Incontestability. After five years of continuous use in commerce, your mark becomes “incontestable.” This means that the registration cannot be attacked because of prior use or descriptiveness.
11. A Certificate. After your mark is registered, you will receive an official Certificate of Registration. This impressive Certificate makes your “intangible” intellectual property more tangible.

The Bottom Line

To gain legal protection of your brands, consider registering them with the federal government.