How It Works & Why It Matters
In the plethora of essential legal protections, a business should retain, one of the most important is a trademark. Trademark law is a key aspect of business. Here’s an introduction to what trademark law really is, and an action guide on how to get a trademark federally registered.
1. Introduction to Trademark Law
Trademark law is designed to protect consumers from confusion between different companies, and businesses from stolen branding. Trademarks are brand identifiers that indicate the source of a good or service. They allow people to associate a word or logo with a particular company or a product or service offered by a particular company.
A company can earn rights in a brand name under the Federal Lanham Act (15 U.S.C. § 1051 et seq.), and can obtain even stronger protection by obtaining a federal trademark registration with the United States Patent & Trademark Office (www.uspto.gov). Federal registration has numerous benefits over relying on trademark rights under the Federal Lanham Act.
Federal trademark registration gives the recipient a government certificate that indicates the U.S. government has granted them rights in the particular classes indicated on the mark based upon evidence that was submitted with the application. Federal registration also gets the trademark listed in the national trademark database at the USPTO.gov web site where others can easily identify your rights to the mark.
A federal registration therefore provides stronger evidence of rights to use that mark, and displays those rights to the general public much more definitively.
Additionally, after five years of federal registration, a trademark holder can submit evidence of continued use and a petition to allow the trademark to achieve what is called “incontestable” status (where the mark can no longer be challenged under most circumstances).
Of course, courts can always overrule a registered trademark in various scenarios (for fraud in obtaining a trademark, for example) but it is very difficult to do so, especially if a mark has reached the “incontestable” status.
Trademark registration is also available at the state level, but it is generally better to obtain federal protection in today’s world of advanced technology and distribution, where a business may have customers in various states.
Now that you have an idea of the basics of trademark law, let’s look at the importance of choosing a name that doesn’t infringe someone else’s rights.
2. Federal Trademark Search for Name Availability
When you begin to choose a company name, product name, website domain, or slogan, you should do some initial research to ensure that someone is not already using that name or a very similar variation of it that would cause consumers to be confused between the two companies.
Using a product or brand name that is confusingly similar to another could result in being sued for trademark infringement and possibly result in significant money damages.
This doesn’t mean there’s always something wrong with having two companies called Company ABC. For example, if the first one sells goods to the cannabis industry, and the second one is a pizza delivery company, the likelihood of legal fallout is low. In other words, if the industries are totally different, then there are times when it is OK for two companies with the same (or very similar) name to co-exist without any trademark infringement issues.
However, if the two names are in similar enough industries that the same customer would be confused into thinking they may be the same company, you have much greater risk of disputes. The names don’t even need to be identical for these situations to become messy.
For example, if someone has the name Joe’s Pizza, and another company has the name Joe’s Fast Pizza in the same area, then customers could still get confused into thinking they are the same company. Thus, you want to avoid any name that is the same or a similar variation to other business names already being used in your industry that would cause consumer confusion.
While two companies can generally co-exist with the same name as long as the industries are different enough to avoid customer confusion, there’s a glaring exception to this standard. That exception is when the trademark has become famous, like Microsoft Corporation, Apple, or General Motors Corporation.
In those examples, owners of famous trademarks are given extra protection against anyone using that name. Period. Maybe throw in an exclamation point for good measure (as long as it’s not trademarked). So, if you were thinking about naming your company Microsoft Window Washing, fuhgeddaboudit, as we say in New York. You would most certainly be hearing from the boys and girls in Redmond, Washington (headquarters to Microsoft Corporation).
It’s not uncommon to see other small brands trying to fly under the radar and using trademarked branding, but large entities like Disney and Apple are notorious for finding and crushing these. It isn’t worth the risk.
The 4-Step Trademark Search Process
Here is a 4-step Research Process that you can follow to help you determine which names on your list will be the best (i.e. the least likely on the list to cause trademark infringement damages later):
- Search the Secretary of State/Registrar in the state in which you are incorporating to ensure no other business in that state has already been incorporated with that name (Note that this step is only necessary if you are forming an entity with that name).
- Search the United States Patent and Trademark Office to ensure no one else already has a registered or pending trademark on your desired name or a similar name in a similar industry (www.uspto. gov). Then, click “Trademarks”, “Trademark Search”, and run various keyword searches to see who else is using the brand or a similar version of it. Remember, it’s OK for there to be another trademark on the same or similar phrase if you’re using it in totally different ways that would not be confusing to consumers. Once you verify on the trademark database that no one else has registered what you want to use similarly, move on to the next step.
- Search the State Trademark Registrar in the state in which you plan to operate your business to ensure no one else already has a State trademark registered with that or a similar name in a similar industry.
- Search multiple Internet search engines to see if you find anyone else using your preferred name or a similar name in a similar industry. (Companies can earn trademark interests by just using a name in commerce – so this step is just as important as the other steps in this process.)
After you find the best name for your company, product, or slogan that is not confusingly similar to another trademark, make sure to seek your business lawyer’s advice in how to mark your trademarks with ‘TM’ to designate that you are claiming an interest in the brand/name. A preliminary search process will let you know if there are any glaring issues, but this does not tell the full story and that’s why you work with a professional. You truly need someone to do a comprehensive search and analysis of the results to tell you if have the green light and if there are warning signs can they be overcome.
Also, if you have obtained an actual federal registration, you can start using the ‘circle R’ designation.
3. Filing A Federal Trademark Registration
As mentioned briefly above, there are numerous advantages to having trademark registrations on your most important intellectual property assets. You will have stronger evidence that you actually own and have rights in those products, can get increased damages in certain infringement scenarios, can reduce your future potential liability to third parties by protecting your brand names and documenting your right to use them, and can more easily deal with piracy and other infringements against you by having evidence of federal registration.
Another advantage of having trademark registrations on your most important intellectual property assets is that it makes your business more attractive to a potential buyer if you ever want to sell it. Why is that the case? You have to think from the buyer’s perspective. Would you rather acquire a company with a bunch of unrecorded rights to products, services, and brands that you’ll have to hassle with later, or would you prefer to buy one that already has received federal registration certificates for the very assets that make the company so appealing? The answer is obvious.
So how does the filing process work?
Here are the 7 steps a lawyer uses to help you obtain a federal trademark:
- Obtain the necessary information from the client (you!).
- Draft the application.
- File the application with the USPTO (uspto.gov).
- Respond to one or more office actions, if any are received and can be overcome.
- If the application is allowed, it proceeds to publication for opposition.
- If unopposed, the trademark then registers.
- Trademark renewals are due in later years to maintain the trademark.
4. Trademark Registration
Once a trademark is registered with the USPTO, a registration number will be assigned. Your lawyer will forward the registration certificate to you for safekeeping after making copies of the files and docketing the future deadlines.
Your lawyer should also include instructions in your letter on how to properly indicate that the mark is registered. These will explain that the ® designation should be used when referring to the mark to let the public know of the registered rights. Your instructions should also explain that in some foreign countries, it is illegal to use the ® designation if you don’t have registered trademark rights in that particular country.
It’s important that your lawyer take affirmative action to help you maintain your trademark rights. This means that you should work with them on trademark monitoring so that if they encounter a third party using your trademark in a confusingly similar way, they should send a cease & desist letter to that third party and get them to stop.
Protect Your Brand
Prior to being faced with damages and stolen IP it’s easy to put off searching and registering your brand trademark. Don’t make this mistake! If you leave your business assets unprotected, you may not be able to salvage the property once it’s stolen.
Get ahead of potential disasters like this and get in touch with us. You’ve worked too hard on your business not to keep it safe. At Artisan Law, we specialize in fortifying your brand against legal attacks, and helping you protect your property with a registered trademark.