One of the most personal and important aspects of starting and growing a business is developing a name, logo and brand image for your company. When doing so, though, you must understand what a trademark is, what it means to “own” it and how to protect it.
A “trademark” is a name, symbol, image or other combination of words and graphics that identifies a product or service. You may use a mark so long as a potential customer looking at your mark and another company’s mark would not be confused and believe that the two companies are associated. There are two primary elements that define whether two marks are “confusingly similar”:
* The types of products or services connected with the mark.
* The geographical area where the mark is used.
Where two marks are confusingly similar, the law then looks to the first date the mark was used in commerce and whether the mark has been registered with the appropriate state or federal agencies. Generally speaking, the person with the first use in commerce “wins” unless the other party has registered their mark first.
As soon as you use your mark in connection with the sale of your goods or services, you own the mark in connection with the sale of those goods and services and may immediately use the “TM” (trademark) or “SM” (servicemark) next to that mark to publicly claim the mark for that product or service. If, however, the mark (or a substantially similar mark) is already in use by someone with similar products or services to yours in the same geographical area, your use of the mark would presumably be found to be infringing unless you have registered the mark with the appropriate state or federal agencies.
You may pursue federal registration of your mark with the U.S. Patent and Trademark Office (USPTO) if you are selling your products and services in interstate commerce. Federal registration provides national protection for your use in connection with the products and services sold in connection with that mark and provides clear damages for infringement. Once the mark is registered with the USPTO, the owner may use the ® symbol next to the mark. The process of obtaining federal registration is complex, costly and lengthy but offers an important protection for your business if appropriate and done correctly.
Once you have built your brand, you have the responsibility to protect your mark and ensure no one is misappropriating it for their own benefit. You should regularly conduct searches and even sign up for Web-based services that provide e-mail notices when your name is found by the search engine. These steps enable you to take appropriate action early against possible infringement.
I see examples of these issues arise regularly, so I offer one up to you here: A client of mine who has federal registration for his logo recently, as part of his ongoing corporate maintenance, encountered a competing business in the Midwest using the same business name. The infringing company had not conducted adequate searches prior to beginning business and was forced to spend $10,000 in rebranding costs, a major hit to this new business. My client’s actions in protecting his mark enabled him to stop the company from using the name and to limit dilution of his brand by the infringing party. Consider which side of this equation you sit on.
The protection of your name and mark includes a complex set of activities. It is critical that businesses ensure the availability of a name before committing to it through branding and advertising. Search state and federal trademark databases, state corporations and licensing departments, and conduct extensive online searches before selecting a name for your business. Once you begin business, determine whether trademark registration is necessary given your growth plans. Finally, perform ongoing monitoring of the use of your mark to protect it from infringement. Your mark is one of the most valuable assets of your business. Take good care of it!
The information contained in this article is of a general nature and is not to be construed as legal advice. You should contact an attorney familiar with your particular circumstances before taking or refraining from any action.
Michelle Hayden Bomberger is an attorney and owner of Small Business Legal Services PLLC, a law firm focused exclusively on helping small businesses start up and grow. For more information, go online to www.sblslaw.com, send e-mail to contact@sblslaw.com or call 425-646-2360.
Talk to us
> Give us your news tips.
> Send us a letter to the editor.
> More Herald contact information.
