By Benjamin S. Lowenthal, Hendrick, Phillips, Salzman & Siegel

A subcontractor’s reputation is often among its most valuable assets. Embodying a subcontractor’s reputation is its brand. A subcontractor’s brand allows a subcontractor to distinguish itself from competitors, signify the consistent quality of its work, and create important goodwill with contractors, owners, and customers. Given the importance of a subcontractor’s brand, subcontractors need to work hard to protect it. However, brand protection can take a backseat to nearly every other facet of a subcontractor’s business, from submitting bids to actually carrying out projects. It’s easy to forget that a subcontractor’s brand, including registering and protecting trademarks, is as important as the integrity of a subcontractor’s work. Without registering and protecting trademarks, competitors can benefit from your name and reputation, whether inadvertently or on purpose. The first step in protecting a brand is selecting, registering, and maintaining strong and protectable trademarks.

Trademarks

A trademark is a form of intellectual property that is essentially a word, phrase, logo, name, graphic symbol, or other unique mark used to distinguish goods or services of one party from those of another. Specifically, 15 U.S.C. § 1127 defines a trademark as “any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Holding a trademark gives subcontractors the exclusive right to the trademark and means subcontractors can take legal action against businesses infringing on the subcontractor’s exclusive use of the trademark. 

Trademark Rights

Trademark rights are acquired and maintained through the commercial use of a trademark in connection with the relevant services (think logo on the side of a truck heading to a project). Trademark rights are protected at the federal level by the Lanham Act (for trademarks used in or affecting interstate commerce) and at the state level by state trademark statutes (as well as common law unfair competition principles). To note, a subcontractor does not need to register a trademark prior to use in commerce. Simply by using a trademark in connection with services and by displaying the trademark in the advertising of those services, a subcontractor automatically acquires some common law trademark rights. However, to best protect a brand, it is best practice to register any trademarks.  

Registering Trademarks

Registering a trademark on the federal level provides a number of significant advantages, including a legal presumption of ownership of the trademark and exclusive right to use the trademark nationwide in connection with the services listed in the registration, public notice of ownership of the trademark, and the right to use the federal registration symbol “®” with the trademark.

At the federal level, the U.S. Patent and Trademark Office (“USPTO”), an agency of the Federal Department of Commerce, issues, registers, and administers trademarks. To register trademarks at the federal level, subcontractors must file a trademark application using the USPTO’s Trademark Electronic Application System (“TEAS”), which is available here: https://www.uspto.gov/trademarks-application-process/filing-online?MURL=teas. 

However, before filing it is important to conduct a trademark search through the USPTO’s Trademark Electronic Search System, which is available here: http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4806:pyoi9x.1.1. Conducting a search of a trademark allows a subcontractor to identify potential problems, such as confusion with a prior registered trademark. Although not required, it is advisable to consult with an attorney to identify any potential issues and guide you through the trademark application and registration process.  

For a complete application, the filer will need the trademark owner’s name and entity type, address, email, depiction of the trademark (the drawing), and the business category in which the trademark will be used. Specifically for subcontractors, the business category will likely be Class 37 for “Construction and Repair Services.” As the USPTO states, “Class 37 includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings.”

Protecting Trademarks

Registering trademarks is just the start. A subcontractor should also protect its brand through enforcing its trademark rights to prevent others from trading upon the subcontractor’s goodwill and reputation. Given the fact that a trademark can be one of a subcontractor’s most valuable assets, subcontractors should be prepared to take appropriate enforcement actions against third-party infringers. 

The first step is to investigate any known infringement. A subcontractor should learn about the infringer, including the extent, duration, and geographic scope of the infringement. This can be done through online investigation. The investigation allows a subcontractor to assess the situation. Is the infringer a competitor? Is the infringement only online or is it throughout the infringer’s business activities? Is it just a small player or major competing subcontractor? 

In the most serious infringements, going straight to litigation and commencing a suit under the federal Lanham Act may be the most appropriate course of action to protect a subcontractor’s trademark rights. However, litigation is expensive, time consuming, and should not be undertaken lightly. 

In most situations, a well drafted infringement cease and desist demand letter can be an effective tool and potentially stop the infringing use, preserve the subcontractor’s rights, avoid costly litigation, and set the stage for litigation if litigation is unavoidable. However, there are both benefits and risks associated with a demand letter. The potential benefits include resolving the infringement without litigation, learning the alleged basis of the infringement, providing support for enhanced damages if the infringer ignores the demand letter, and creating a record of trademark protection activities to strengthen the trademark. Alternatively, the risks include the alleged infringer attempting to invalidate the trademark or claim superior rights to the trademark through a declaratory judgment action. Before sending any demand letter, however, it is important that a subcontractor assess, with the advice of an attorney, the infringing activity and the strength of the subcontractor’s trademark infringement claim. 

As stated above, a subcontractor’s reputation in the construction industry is one of its most valuable assets. It takes time and consistent quality work to distinguish itself from competitors, and create important goodwill with contractors, owners, and customers in the industry. As such, it is vital that a subcontractor protect its reputation and brand. The first step is to register any trademarks, including logos, a subcontractor may have. Once registered, a subcontractor should protect its trademark rights through cease and desist demand letters, or litigation in the most serious cases, in the event of trademark infringement. 

About the Author

Benjamin S. Lowenthal is an associate with Atlanta-based law firm Hendrick, Phillips, Salzman & Siegel and is a licensed lawyer in the states of Georgia and New York. Ben’s practice includes commercial litigation, including trademark related matters, within the construction industry. Ben received his undergraduate B.S. from the University of Georgia and his J.D. and LL.M. from the Elisabeth Haub School of Law at Pace University. For more information, or to assist with any trademark infringement issues, contact the author at (404) 522-1410, bsl@hpsslaw.com or visit www.hpsslaw.com.