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Trademark Basics

Trademark Law – Attorney Tips for Business Owners

Protecting one’s trademarks is an area that is often overlooked by business owners. This oversight can have significant financial consequences to the business. I have seen numerous instances where a company receives a cease and desist from a trademark owner for failing to conduct a thorough search before choosing a name or logo for their business. In addition, I have seen other companies move to expand into a new area, only to find a company already present with the same name for similar services. Much of this could be avoided by considering trademark protection at the outset and being knowledgeable with regard to the following items.

  • What is a trademark? It is a word, phrase, symbol or design that identifies and distinguishes the source of the goods or services of one party from those of others.
  • Must all marks be registered? No, it is not required. However, federal registration provides certain advantages to the trademark owner, namely notice of claim of ownership to others, the exclusive right to use the mark in conjunction with the goods or services or the legal presumption of ownership nationwide.
  • What can happen if I decide to wait to register my mark? If someone else files for federal registration before you, then you may be limited to only the geographic area in which you currently sell your product or service, which may severely limit future growth under that name.
  • When should I have a trademark attorney conduct a search of my name? Ideally, this should occur prior to the commencement of operations under that name. This is true even if you do not plan to register the name because you want to make sure that there is not another trademark out there for similar goods or services.I oftentimes have clients that have been in business for more than five years before they consider protecting their name. Sometimes they are able to move forward with a trademark application at that point. However, other times they have lost the ability to file for federal registration because someone else beat them to the punch.
  • When can I use the ™ symbol or the ® symbol? The TM may be used next to your trademark to indicate you are claiming rights to the mark. This may be used without filing for trademark registration. The ®, on the other hand, may only be used when a Certificate of Registration has been issued by the U.S. Patent and Trademark Office (“USPTO”) for the trademark.
  • Are there terms that cannot be protected under trademark law? Certainly, there are various marks that the USPTO will not register. These include, but are not limited to, generic marks, merely descriptive marks, immoral marks, marks that are merely a surname and marks that are confusingly similar to existing marks, to name a few.
  • Should I file for protection for my name, my name in conjunction with my logo, or both? In a perfect world, I would say to file both. However, not all small business owners can afford two trademark applications out of the gate. If a company can only afford one, most trademark practitioners recommend that the word mark be filed for first and the logo at a later date. The word mark does offer a wider breadth of protection. If you file for the logo and not for the word mark, then a problem can arise later if you decide to change the logo.
    Intellectual property is an intangible asset, which may be why so many business owners fail to recognize its value and take steps to protect it at the correct time in the life cycle of their business. Understanding some of the questions discussed above and speaking with an intellectual property attorney will go a long way toward avoiding costly problems down the road.