If you’re like most people, choosing a name for your new business, or your product or service line, was difficult. Your team probably spent days thinking about whether the name reflected the nature of your business, and whether the name was catchy enough.
If you’re like most people, after all of that hard work, you breathed a sigh of relief and started advertising.
And, unfortunately, if you’re like many people, you did not research whether the name you selected was available to be used as a trademark—and it could be extremely costly to your business.
If you’re like most people, you did not research whether the name you selected was available to be used as a trademark.
With 35 years of in-the-field branding and trademark law experience, and after teaching volumes of classes to industry professionals, and countless attorneys for continuing legal education, I want to share with you some of the most common branding questions and errors. Some of the information below is unknown even to branding experts, who often focus on the creative media, but not necessarily the legal landmines.
If you are a branding professional developing brands, you need to be particularly aware of the trademark implication of your deliverables.
Some of the information below is even unknown to branding experts, who often focus on the creative media, but not necessarily the legal landmines.
Here are 8 frequently asked questions that I get asked all the time:
1. I just started a business, why should I start thinking about trademarks now?
When you started your business, you selected a name and logo because you believed that they distinguished your goods or services from those of others. Over time, your customers, and potential customers, will recognize the quality of your goods or services solely because of the business name and logo. Developing a quality reputation that is based solely upon a business name or logo takes valuable time.
But, you may not realize that your business name, logo or product name may be unavailable to be used as a trademark. If you select a brand that is not available, you will spend years trying to build “good will” in a business name, that, ultimately, you may have to forfeit. A future trademark problem could destroy a lucrative franchising or growth opportunity.
Remember the golden rule of property (and other things): Just because you love it, does not mean you can have it. It may belong to someone else!
Just because you love it, does not mean you can have it. It may belong to someone else!
2. I thought that I would be protected if I filed for a fictitious name or incorporation. Isn’t that right?
No. In my experience, this the “#1 Error” by non-lawyers, general practitioners and accountants who do corporate filings without training and with catastrophic trademark implications, some of which catastrophes do not surface for many years (which tends to be why they are catastrophic).
I thought that I would be protected if I filed for a fictitious name or incorporation. Isn’t that right? No.
Remember that fictitious name filings and incorporations are performed at the state level only. Even if you could afford to maintain a yearly filing in every state, you would still not be immune from trademark problems.
For example, consider the following situation: A company incorporates as PlumbingTech Service, Inc., and provides the service of computerizing home plumbing. Another company incorporates as AllTek Corp., and one of many services it offers is its PlumbingTech service line, which is also to computerize home plumbing. Clearly, the reputations of the two companies would be confused by the consuming public. Thus, even though both companies are properly doing business from the Corporation Bureau’s perspective, there are obvious trademark problems.
Or, try this: call the Corporation Bureau of your state and ask if, “[Microsoft/ Disney/ etc.] World Services Home Computer Repair, Inc.” is available for a new business incorporation. It probably will be available, and, if you form that company with the state, you will probably get sued. The state filing does not grant trademark rights.
States often only evaluate “technical distinction,” of company names for tracking purposes, not trademark “substantive distinction,” and many states won’t tell you that fact. They may tell you, “that no one else can take that name,” but what they really mean is, “No one else in our state can have exactly that same name, but other people can add a word or two to change the name, and we are not trained to make any judgments regarding trademarks and whether this name is infringing on anyone’s trademark legal rights.”
States often only evaluate “technical distinction,” … for tracking purposes, not trademark “substantive distinction”…
3. Okay, it’s starting to make sense. What should I think about in order to select a name or logo that can be used as a trademark?
There are two basic reasons why a name you select will not be available to be used as a trademark: either the name already has been used by another business, or it is generic.
As in so many areas of the law, first in time is first in right. If another business has already used a similar name for similar goods, then that business generally will have the exclusive right to use the trademark.
The applicable standard is whether a brand you want is likely to cause confusion, mistake, or suggest an untrue sponsorship or affiliation with a prior user. For example, you might not confuse YMCA with YWCA (men v. women), but you might think they are affiliated or cross-sponsored enterprises. The question is not simply about confusion and mistake, but also about the more nebulous “affiliation.” Also, importantly, the brands might be different, or even different products, but, remember, it is not a technical question.
Whether the relevant consuming public might confuse “RedStick” lipstick with “Redstick” shampoo, or eyeliner, or breath mints, or wigs, can be a difficult assessment. Someone might not confuse lipstick and wigs, but someone might think it is the same or affiliated manufacturer, both being in the fashion industry. Or, the dispute might be further complicated by slightly different brands, e.g., “Redstick” lipstick v. “Redstock” lipstick.
The applicable standard is whether a brand you want is likely to cause confusion, mistake, or suggest a sponsorship or affiliation with a prior user.
Even if the name has never been used by another business, not all names can be trademarks. For example, generic names are not available for trademark protection, because they are generally the very name of the product or service itself. For example, a business could not trademark “spoon” for a shovel-like kitchen utensil. However, someone might be able to claim “spoon” for a restaurant service, since “spoon” is not the generic name for a restaurant.
Also, names that describe the goods or services are generally not available to be trademarks without a higher standard of proof of market distinction. For example, “Best Computer Service” for a computer servicing company describes the services offered. An easy rule of thumb to determine if a mark is descriptive is whether there is an adjective modifying a noun, or adverb modifying a verb.
The best and most valuable trademarks are arbitrary. For example, the term “Kodak” does not otherwise have any relation to photographic equipment, and the term “Xerox” has no meaning other than photocopying equipment. The reason these brands are powerful is because they are distinct, having no other meaning other than as a company brand.
The best and most valuable trademarks are arbitrary…[T]he reason is because it is distinct, having no other meaning other than as a company brand.
So, the essence of what you are trying to achieve is a “distinct” brand. As I say in my classes: If a bunch of cows in the auction carry the same brand, there’s going to be a cowboy fight in the Not OK Corral when one gets sold…
4. After I select a name, how can I determine whether it is able to be used as a trademark?
The only way you can obtain some assurance that a name or logo has not previously been used is to perform a trademark search. Preliminary computerized research can be performed by googling/binging, searching databases, and searching www.USPTO.gov (in the Trademark not the Patent section).
If you are picking a common word from the dictionary for your brand, the review can be tricky, of course, because you are probably not the first person to want that word as a brand. Perhaps the brand is not being used previously in your particular industry (or in a manner that would lead to infringement), but other uses of the brand can “dilute” the distinctive value of the brand.
A trademark search is not so much to determine that a mark is available, but to determine whether a mark is not available. The search is to determine what can be reasonably found, not to determine that nothing exists. Proving a positive and proving a negative are not the same. (If you go to an event and ask 50 people if Gregg is in attendance, all 50 may say “no, I didn’t see him”, but one “yes, he’s here” answer supersedes 50 “no” answers.) That is, one express positive is of a different evidentiary weight than 50 implied negatives. If you see him, you know he’s there, if you don’t see him, he might still be there. When you search for a prior trademark use, if you see it, it’s there, if you don’t, it might still be there but you did not find it.
Also, a search is limited to the records searched, the cost to the client, the potential variations of the mark that make it difficult to search. For example, if someone is doing business to “KLEYNINGKREW” on hills of Wyoming, and the mark is not registered there, that person has superior rights on the hills of Wyoming. However, because it is not registered anywhere, it cannot be reasonably searched and found. Furthermore, because of the unusual spelling, even if it were registered somewhere, the search would need to be in that registry and with the unusual spelling. Again, if you find something, you know it is there; if you don’t find something, you still don’t know it is not there.
Therefore, searching for trademark prior uses, even by professionals, is never guaranteed to ensure that there are no uses; however, not searching and clearing trademarks prior to implementation is worst-practice branding—it simply will not withstand legal infringement scrutiny.
The searching by the creative team and/or a non-attorney is still important to give some indication of availability and should be done early and often during the creative process. It also lowers the cost of legal fees.
In my practice, what I do is to add value by rendering professional opinions, particularly regarding navigating through challenges and strategic planning. There is as much art as there is science. With more than 35 years of practice and having personally filed more than 500 applications, there are a lot of areas that are catastrophic if not properly assessed very early. Legal counsel is always expensive, but consider how much it costs to purchase advertising, stationery and signage, and to build good will for years, only to find out that your name, slogan or logo must be changed to avoid a trademark infringement lawsuit, or that territories have to be divided, or an acquisition or other exit vehicle is blown after many years of hard work because the brand was never cleared.
Not searching and clearing trademarks prior to implementation is worst-practice branding—it simply will not withstand legal infringement scrutiny.
Obviously, clearing brands is crucial to licensing, distribution and franchising deals that rely upon being granted clean rights.
I have experienced new clients coming to me after spending huge sums of money and time on the creative process, sometimes with professional creative teams, only to find that the brand is not available and that the client would be an infringer. The disruption and work-around is simply catastrophic. And, it happens at large and small companies. Make sure you ask your creative team if the suggested brands have been cleared for trademark implications.
Make sure you ask your creative team if the suggested brands have been cleared for trademark implications.
5. After clearing the brand, if it is probably not being used by another business and if it appears to be able to be used as a trademark, then what?
After you perform adequate research, then you can perform your state business filings such as an incorporation, fictitious name registration, or product launch. If you have already performed your business filings, or selected logos or product or service names, then you should still perform the research as explained above. You are far better off performing the research after the fact, than to continue to use and develop a name or logo without knowing your legal rights.
Searching to see if you would be an infringer if you implement the brand is usually a lead into the second step: claiming it and protecting it from others.
Searching to see if you would be an infringer if you implement the brand is usually a lead into the second step: claiming it and protecting it from others.
Once you are comfortable as to the propriety of your intended use, you have the option to register the brand with the state and/or federal government.
6. When do I get a trademark? Don’t I have to register it with the government?
Assuming you are not an infringer, you get a trademark when you use it; however, generally, your rights are limited to the territory of use. And, no, you do not need to register a trademark to own a trademark.
No, you do not need to register a trademark to own a trademark.
There are two types of registrations: state and federal. You may not realize that you obtain rights in your trademark on the first date you actually use the trademark in commerce. For a state trademark, the first date you use the mark in that state is the date when you begin to develop trademark rights. For a federal trademark, the first date you use the mark in interstate commerce (between at least two states) is the date when you begin to develop federal trademark rights. You do not have to register the trademark with the state or federal government to obtain trademark rights! But…
Without a federal trademark registration, the scope of your rights will be limited to the market territory where you actually use the trademark. Therefore, without more, you would have to do business nationally, in every market, to obtain complete national trademark protection of an unregistered trademark. A federal trademark registration provides a pervasive constructive use as of the date of filing the application, provided that the registration is approved.
However, without a federal trademark registration, the scope of your rights will be limited to the market territory where you actually use the trademark.
Generally, you cannot obtain a trademark without first actually using the mark in commerce. However, you now have the ability to secure a federal registration filing date which precedes your actual use of the mark in interstate commerce. The type of filing, called an “intent-to-use application,” is an extremely valuable way to lock rights in a mark without disclosing the mark prior to its actual use; as a general rule, “intent-to-use” applications are only available as part of a federal registration process.
7. Well, I’ve already used my trademark in commerce. Why should I register it?
Whether a state or federal registration is advisable is a function of the costs and benefits of each registration. The benefits of a state registration vary with the law of each individual state. Most often, state registrations do not provide any more protection than available without a state registration, i.e. protection in the actual market territories within the state. However, state registrations are usually entered into computer databases that are nationally available; thus, it may act as a deterrent to another business that is performing a trademark search.
Most often, state registrations do not provide any more protection than available without a state registration.
A federal registration of a trademark, where you get to use the powerful ® symbol, does two things: First, your brand claim gets reviewed by a U.S. Examining Attorney. This is a very powerful vetting of your claim and has powerful implications, if the brand makes it past the Examining Attorney’s scrutiny. Second, for a U.S. registration, you would effectively have trademark rights through the entire country, even if you have not actually used the brand in certain areas of the county. (International rights and benefits exist, as well, but are beyond the scope of this article.)
Also, there is a special federal application, called “Intent-To-Use” (ITU) application that allows you to lock the rights even before you’ve actually used the brand in commerce, and gives a strategic timing advantage of giving you almost 4-5 years from your filing date to use the brand in commerce. This is a significant strategic opportunity.
An Intent-To-Use (ITU) application allows you to lock the rights…[and] is a significant strategic opportunity.
If you federally register a trademark on the USPTO Principal Register, you will have the following advantages, among others: expansion of your trademark rights from your actual market territory to include the entire United States, regardless of where you actually do business; you will be presumed to be the owner of the trademark; a registration will prevent similar marks from being registered; and you may receive triple damages and attorneys’ fees if you are injured by infringement.
If you register a trademark…you get to use the powerful ® symbol…your brand claim gets reviewed by a U.S. Examining Attorney…[and you] have trademark rights through the entire country.
See our memorandum, Federal Registration Process for more information about the actual process of a federal trademark application.
8. I’ve seen businesses use a “TM” symbol and the ® symbol. Why are there different symbols, and which should I use?
There is also the “SM” symbol for a service mark. Most people use the term “trademark” generically. Actually, there are trademarks for products and service marks for services. Until you receive a federal registration of a mark (and only if you are sure you are not an infringer because you cleared the brand), you can use the “TM” symbol (for products) or the “SM” symbol (for services) to alert the public that a trademark rights are being claimed. While use of those symbols does not convey any rights, it is good practice, especially because it prevents an infringer from claiming that the infringement was innocent. After a federal registration of either a mark, you should use the ® symbol to signify that the mark is federally registered. The ® symbol should never be used prior to a federal registration.
The ® symbol should never be used in the United States prior to a federal registration.
All in and summarized, the take-home is this: 1. just because you love it, does not mean you can have it; 2. your creative branding professional is probably not an attorney; 3. vet/clear any intended brand as early as possible in the creative process; 4. corporate filings, domain names, etc., do not, in and of themselves, create or protect trademark rights; 5. federally register any brand you want to protect. Enforcement of trademarks is a legal construct. Particularly in today’s highly-branded marketplace, it is more important than ever to get solid legal advice at the front-end to build upon something enforceable at the back-end. Strategy sees tomorrow, but implements today.
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https://www.linkedin.com/pulse/trademark-faqs-what-you-need-know-gregg-zegarelli-esq-
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Protecting Your Brand / Trademark with Automated Monitoring
The Federal Trademark ® Process-How It Works!
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Articles and information are for general information only, and often address issues, without expressly indicating, in generalizations. Laws vary between and among jurisdictions. You should not rely upon any information provided in this article as applicable to your particular situation. The law, filing fees, etc., change often, so the information in this document may not be current. The laws of various jurisdictions may be different than provided here. Please contact us at www.zegarelli.com if you are interested in becoming our client, (engaged only in writing) and only then would this office be in the position to provide advise with regard to your particular situation.
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