By Associate Attorney Danielle Nodar
Branding your business helps set it apart from your competitors and keeps it present in the minds of consumers. To protect that brand, a business can obtain a trademark that essentially puts the world on notice that you are the owner of the specific mark. A trademark is a “word, phrase, symbol and/or design” that identifies and distinguishes the goods or services of the owner of the mark from another party. Examples of these marks include brand names, slogans, tag lines, logos, and design elements (think, Tiffany blue boxes).
To get a federal registered trademark, the mark must be used in commerce, so normally the owner of the mark is a business. An application can be filed before the mark is used in commerce if the owner intends to use it in commerce, but the United States Patent and Trademark Office (“USPTO”) will not register the trademark until the applicant shows that it is actually being used. A benefit of a trademark is that they do not expire, so long as the mark continues to be used in commerce and the owner files periodic documentation with the USPTO.
The trademark application process is fairly simple, so oftentimes non-lawyer business owners will attempt it themselves, but actually obtaining the registered trademark can be tricky. Applications can be denied for a variety of reasons, such as the mark being “merely descriptive” of the goods or services it applies to, or a mark being considered too similar to an existing trademark in a similar industry (a “likelihood of confusion” according to the USPTO). The strongest trademarks are “fanciful and arbitrary,” meaning they are words that have no relation to the good or service sold (like Apple computers), and the second strongest trademarks are “suggestive” meaning they suggest the good or service without literally describing it (think, Facebook). Unfortunately, most people name their businesses something that describes their goods and services for marketing purposes (for example, “Northwest Construction”), so trademark registration may not possible. Exceptions to this rule are well-known businesses or those that have been in business for many years.
A business can have a common law trademark (indicated by the ™ symbol instead of the ® symbol) without registering it with the USPTO just by using the mark in commerce, but there are benefits to federally registering. Inclusion in the national database deters others from using similar marks in similar industries. Also, there is a legal presumption that registrant was the first to use it, meaning that in a dispute with another business, it would be presumed to be the winner. Damages would also be presumed. A drawback to a common law trademark is that it is limited in geographic area, so you could have a competitor business open up with the same name in an entirely different state, as long as you did not share customers. If a competitor opens in your geographic area, and you sue them for common law trademark infringement, you would have to prove that they did damage to your mark and that you were the first to use the mark.
If you’re thinking of protecting an element of your brand with a trademark, give Jesson & Rains a call!
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