The Benefits of Registering a Mark (Part I)

Nov 2022
José Martínez-Rivera

Let’s begin with an example.  Joe started a business selling the most succulent donuts ever.  He named his business “Jonut’s”.  The first month of business was great, and the second, and the third, and so on.  Voice spread that a donut from Jonut’s was like a slice of heaven and everyday a long line of customers would form early in front of Jonut’s shop window in Old San Juan.  Children pressed their hands against the store’s showcase in anxious anticipation, workpeople wanted, needed, to start their day with, for example, item #3 (coffee, eggs and jonut), and tourists bought at least a bag of “jonuts” to eat during their guided tours.  After a long and arduous journey, Joe was proud of his success as he glanced at his store front and at the “Jonut’s” styled neon-pink logo that he designed.  Joe knew that “Jonut’s” was special.  So, naturally, Joe registered “Jonut’s” name and logo in both the federal and Puerto Rico registries of marks.

Three years after opening “Jonut’s” Joe traveled to Hawaii. On the last day of his month-long vacation Joe happened to find a donut store with the name “Jonut”.  He was horrified.  Even the logo resembled his.  The store had few customers and the “jonuts” were not that good. Nevertheless, he inquired the store clerk who told him that “Jonut” was a new store, and that the owner was planning on expanding to various states.

Upon his return, Joe found out about another surprise: right across the street from his store, John had opened “Johnut’s”.  John was one of Joe’s first customers and saw a golden opportunity in the donut business.  But John lacked Joe’s craft and, above all, Joe’s secret recipe.  So, to attract customers John copied Joe’s business name and logo.  He thought he was being clever by adding an “h”.

Joe was very angry.  Anxious customers flocked “Johnut’s” only to be disappointed.  Furious customers inquired Joe on why the jonuts across the street lacked the quality of the jonuts in his store.  Scathing reviews started to appear online.  It was clear that “Johnut’s” was dragging down the good name and reputation that Joe built from scratch. Joe had to do something, so he contacted his lawyer and explained his problem.  His lawyer explained that the registry of “Jonut’s” gave him the upper hand, since the registry of a mark in the Puerto Rico Trademark Office and in the United States Patent and Trademark Office bestowed upon the registrant the following rights and remedies:

1. The registrant to the mark –be it a name or a logo– has the exclusive right to operate, market and use the mark. In other words, Joe has the exclusive right to  use “Jonut’s”, and John’s “Johnut’s”, which is similar and may cause confusion in the mind of the average consumer, is in violation of that exclusive right.

2. To ascertain his exclusive right, the registrant could file a complaint for injunctive relief and can seek an order of cease and desist directed at the person or entity using the mark without permission. Also, the registrant has the right to recover damages.

3. Registering a mark creates a presumption of ownership that facilitates the legal process and establishes the burden of proof.

4. Also, the registrant can use the ® symbol, which indicates that the mark is federally registered.

Joe asked his lawyer: What about the “Jonut” store I found in Hawaii whose owner is contemplating expanding to other states?  Right now, my sister Julia, who is living in Florida, is helping me open a “Jonut’s” in Orlando.  How can I protect my mark?  That is a question to be answered in the next part of “The Benefits of Registering a Mark”.  In the meantime, should you have any questions regarding Trademark Law, our team is ready to assist you.

Contact Attorney José M. Martínez-Rivera


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