5 Trademark Questions Answered by a Trademark Attorney with Small- and Medium-Sized Businesses in Mind

by Ryley Carlock & Applewhite
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Q: I'm starting a new business and I have chosen a name. What do I need to keep in mind in order to protect the name of my business?

A: First, you should check with your state's business entity registration office to see if the name you've chosen is available for your entity name. In Arizona, for example, you would check name availability with the Arizona Corporation Commission. In Colorado, you would check with the Secretary of State's office.

However, checking name availability for your new entity with the business entity registration office is just one of the recommended steps. Before adopting a name that you will use in connection with your business, you should consider a trademark clearance search to be confident your proposed business name use will not infringe the trademark rights of others. By not adequately checking availability of your business name, you run the risk of having to change your name after investing time and money in the brand if your use infringes someone else's trademark rights. A forced name change can be quite costly when you consider that you may need to change your signage, product packaging, advertising, marketing materials, and many other things. Having a clearance search done by a trademark attorney during the planning stages of your new company can help you avoid those problems and expenses after you are established.

Q: Can I use the ® symbol with my trademark in the U.S.?

A: The ® symbol indicates that the trademark is registered with the U.S. Patent and Trademark Office ("PTO"). If your mark is not registered with the PTO, you cannot use the ® symbol. If you have filed a trademark application with the PTO, you cannot use the ® symbol until a Certificate of Registration is issued for the mark. Also, if the mark is no longer federally registered, you cannot continue to use the ® symbol. For trademarks that are not federally registered, you can use the ™ symbol with the mark to identify it as a trademark, whether or not a federal trademark application has been filed. Some companies use SM (referring to a service mark) with a mark that is used for services as opposed to goods, but the ™ symbol can be used with marks for both goods and services.

Q: I have a new product that I'm developing. What are some things to consider regarding what I call this new product?

A: At the product development stage, you should consider how you intend to brand the new product. Will the product have the same trademark as your company name or will it have a unique product name? In either case, you should consult with a trademark attorney early in the process to determine whether the trademark you are considering for the product is available and protectable. Available means that your proposed use will not infringe the trademark rights of others. Protectable means the proposed mark is distinctive rather than descriptive. A merely descriptive mark—one that describes what the product is or does—is a weak mark that is difficult to protect. If the trademark is available, you should consider filing a federal trademark application based on your intent to use the mark in the future. That basically allows you to reserve your rights in the mark while you are still developing the product.

Q: I want to use a trademark for my new product that makes it clear what the product is when my customers see the mark. Is there any downside to that approach?

A: Yes, descriptive trademarks are generally weak and difficult to protect. Many companies choose descriptive marks in part because they require less effort and dollars in advertising and marketing the products to consumers. "Carry All" as a mark for your new tote bag may be easy to market, but because it is descriptive, it will be difficult to protect. Other parties can also use the same descriptive terms to describe their products, which also makes it more difficult for consumers to distinguish your product from others.

The strongest trademarks are made-up words or existing words that have nothing to do with the product. While these marks may require more advertising and education before consumers know what the product is upon seeing the mark, they provide the broadest protection because of their distinctiveness. When selecting a mark, you should also confirm that it is available for use. It may not be available if it is the same as or confusingly similar to a mark that is already in use for the same or similar goods.

Q: I received a "cease and desist" letter regarding a trademark I've been using. In the letter, the other party says my trademark infringes their trademark. What do I do?

A: You should consult with a trademark attorney to determine your rights. Whether one party's trademark infringes the trademark rights of another party depends on many factors related to the likelihood that one party's use will cause confusion as to the source of the parties' products. Those factors include how similar the marks are, how similar the parties' goods and services are, the channels of trade of each party, whether there has been actual confusion by consumers, among other factors. Even if these factors support a likelihood of confusion, if your use of the mark began first, you may have prior rights and may be able to prevent the other party from using their mark.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Ryley Carlock & Applewhite | Attorney Advertising

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