Trademarks (including service marks) are words, phrases, symbols, or designs that identify and distinguish goods and services. An effective trademark can be a powerful tool for a business owner. It enables the business owner to protect her business’s valuable intellectual property from competitors. It can also be a source of added value for the business in the event of expansion or sale. Furthermore, it can prevent unauthorized use of company products, slogans, and other company intellectual property on the Internet. In short, trademarks both create and protect value for businesses.
SELECTING A TRADEMARK
To help ensure that the desired trademark can be obtained, business owners have to choose carefully. Business owners must select a trademark that has not already been registered or is not confusingly similar to other existing marks. Prior to submitting a trademark application, it is generally advisable to have a professional engage in a search for similar marks. In addition, choosing the type of mark to be registered is important. Three different kinds of marks are common:
- Generic marks, such as RESTAURANT or SHOP, may not be registered.
- Descriptive marks, such as JOE’S COFFEE SHOP, require the registrant to show a specialized “secondary meaning” that the mark has obtained, separating it from other similar marks in the minds of consumers.
These marks are also hard to protect in an infringement action.
- Suggestive, arbitrary, or fanciful marks, such as JOCOSHO, require no showing of secondary meaning, and are generally easiest to obtain and protect.
HOW IS A TRADEMARK OBTAINED?
Trademarks may be obtained in two ways. First, a trademark may arise solely from being used in commerce. These are called “common law” trademarks. Here, no state or federal registration is required. Common law trademarks are typically limited to the geographic area in which the mark is used. Common law trademarks do not provide as many rights as a registered trade mark. More typically, a registered trademark is obtained.
Trademarks may be registered on a state or federal level. When obtaining a trademark, the first step is to search for potentially similar marks. Afterward, an application for registration is filed either on the grounds that the applicant is using the mark in commerce or intends to do so. This process can be challenging, and typically can take anywhere from nine to eighteen months. The application will be reviewed and will either be approved or an Office Action will be issued indicating an issue with the mark. Once approved, the mark is published for 30 days, during which any party can object to the application. After publication, the registrant receives a certificate of registration or a notice of allowance, which must be responded to.
PROTECTING THE TRADEMARK
Once a trademark has been obtained, it must be protected aggressively. Trademarks may lapse after a certain time period if certain notices are not filed with the USPTO. More importantly, unauthorized use of the mark must be prevented, since the mark may be considered abandoned if such use is permitted. Business owners especially need to consider protecting against unauthorized use on the Internet and in social media, since these are frequent sources of unauthorized trademark use.
TRADEMARK VS. TRADE NAME
Finally, trademarks are often confused with trade names. As explained above, a trademark identifies goods and services. Trade names, on the other hand, identify the name of a business other than its legal name. For example, “Joe’s Coffee Shop, Inc.” may obtain a trade name to identify itself as “Joe’s Coffee Shop” and not have to use the “Inc.” reference. This will also protect others from operating under a similar trade name. Trade names, otherwise known as a “doing business as”, are obtained through the state where your company operates. In Nebraska, operating under an improperly registered trade name is punishable as a Class V misdemeanor.