A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Provided that your brands, logos and slogans are distinctive, identify your good or services, and are not likely to be confused with a pre-existing trademark, trademark registration can be used to prevent them from being used by a competitor.
Not all brands are eligible for trademark registration. For instance, the USPTO won’t register a trademark for a merely descriptive name, i.e. you can also demonstrate that the brand has been used so frequently that consumers automatically associate it with your product or service.
If you can’t register your business name, there are still some legal protections available, such as trade name reservation. A trade name is the official name a business uses in the course of doing business. It is also often referred to as a DBA name, which stands for “doing business as.”
Most states require a new public business entity to have a name which is not the same (or similar) as another active business. Corporations and limited liability companies register their trade names when filing formation documents with the state of incorporation. In addition, partnerships and sole proprietorships must obtain a “Trade Name Certificate to Operate” from the clerk in each county where business will be conducted.
Benefits of Federal Trademark Protection
Because it can be so valuable, businesses should consider the availability of trademark registration before investing significant time and effort into building a brand. By conducting a trademark search with the assistance of a trademark attorney, you can verify that your proposed business name, logo or slogan is not being used by someone else in connection with similar goods and services.
You can establish rights in a trademark based on the use of the mark in commerce without seeking registration with the U.S. Patent and Trademark Office (USPTO). However, it is generally advisable to take the time to file a formal trademark application. The benefits of federal trademark registration include:
Public notice of ownership of the mark;
A legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
The use of the U.S. registration as a basis to obtain registration in foreign countries;
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
The right to use the federal registration symbol ®; and
Listing in the United States Patent and Trademark Office’s online databases, which will deter others from registering the same or similar mark and prevent infringers from claiming ignorance of the mark.’
The ability to register one’s brand with the Trademark Clearinghouse, for domain name protection purposes.
Working with an Attorney to Facilitate the Process
The U.S. Patent and Trademark Office (USPTO) recommends that trademark applicants be represented by legal counsel. An experienced trademark attorney must assist with the process of protecting a trademark by:
Conducting a comprehensive trademark search before you file your application;
Preparing your application, including the description of your goods and services;
Responding to correspondence from the Trademark Office’s examining attorney, such as requests for additional information;
Appealing decisions by the examining attorney, such as a refusal to register; and
Helping your business enforce your trademark after registration.
Retaining a lawyer also not only significantly increases the odds that your trademark will be approved, but also that the registrations will be more likely to be found valid if challenged, and will have sufficient strength to exclude competitors.
At Scarinci Hollenbeck, our intellectual property attorneys routinely clear trademarks domestically and abroad, register the marks, maintain them, and work with clients to ensure they remain protected and that infringers are deterred. We welcome you to contact us to explore how we can help protect your company’s brands.
If you have any questions, please contact us
Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work at 201-806-3364.
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