Trademarks
Your business name and other brand identifiers are trademarks (or service marks, if yours is a service business – for purposes of this writing, trademarks will mean both trademarks and service marks).
Any device you use to market and promote your business- to develop a goodwill association between the device and your business’s goods and services- can be a trademark. When people see (or hear, smell, or otherwise encounter the device), you want them to think of your business and your goods and services. That is a trademark.
If your business name is consumer-facing, meaning that it is the name under which you market your business, it is a trademark (some business names are largely invisible to consumers and not used as trademarks). You might have a tagline or a logo that you use to market your business. If so, that is a trademark. Some businesses might use a particular color as a trademark; not just the name in a certain color, but a color altogether. For example, picture a certain delivery truck in a certain color brown. You probably know exactly the brand of truck, because they are using the color as a trademark meant to generate your recognition of their brand and services every time you see their truck in their color. There is a yarn company that uses a scent. There is a computer chip company that uses a sound – you’ve probably heard it during advertisements for the brand. Certain restaurants or brick-and-mortar businesses design the look-and-feel of their brand so that every time you enter one of their locations, you know you’re dealing with their brand. Pretty much anything can serve as a trademark.
If you are starting a new business and will use the business name to market the business, one of the first things you’ll need to do is to search to ensure your preferred business name is available to use as a trademark. This is completely different than searching to ensure your name is available as an entity name with the Secretary of State! Just because the name is available to use as an entity name with the Secretary of State does not mean you have the right to use it as a trademark.
Common Law Trademark Rights
Your rights to use a trademark in the United States come, first, from common law. Unlike in many other countries where trademark rights come from being the “first to file” (first to register the trademark), in the United States, trademark rights come from being the “first to use”.
If you are the first to use your mark in commerce, in your area of use, in such a way that helps the consumer to develop a goodwill association between your mark and your business’s goods and services, then you should have the exclusive right to use and control the use of your mark for those goods and services in that area of use. Notice the importance of the association between your mark and your specific goods and services, as well as the geographic limitation tied to your common law trademark rights.
Notice also that you don’t necessarily need to register your mark anywhere to be able to use it. But, if people don’t need to register their trademarks, then how are you to know whether someone else has already established rights to your preferred mark for your goods and services in your area of use?
Trademark Searching
That’s where searching comes in. There are two different ways to do a trademark search.
Knock-Out Search
The first is called a knock-out search. This is where we examine various resources to do our best to get the lay of the land with respect to your preferred trademark and related goods and services (and area of use). A knock-out search is usually an important step in the trademark search process. A knock-out search is also more akin to educated poking around than anything else. It can start to give us a sense of what’s being used and not with respect to your preferred mark and can turn up red-flags, which can save you valuable time and investment. But, it cannot usually give us the full picture or a clear, green light. For that reason, if a knock-out search looks promising, it may be important to do a comprehensive search.
Comprehensive Search
A comprehensive search involves a search service and special software that searches those same resources we use during the knock-out search and more, only it searches much more broadly and deeply than is possible to accomplish with a knock-out search. A comprehensive search typically turns out hundreds of pages of search results, which we analyze and discuss with you. Because the United States is a “first-to-use” jurisdiction, some legitimate mark use may be difficult to find, and even a comprehensive search may not overturn every rock. But a comprehensive search is typically more reasonable commercial due diligence than a knock-out, and helps to demonstrate that you have taken steps to more fully examine the legal landscape with respect to your prospective mark.
Once you have determined your trademark is available, you can establish use under common law by being the first to use in commerce in your area of use for your goods and services, as described above. Of course, with only common law rights established, if there is any contest regarding your rights, you might need to prove your area of use and all of the factors upon which you have established your unregistered, common-law rights.
Federal Trademark Registration
If you are the first to use your mark with your goods and services in interstate or international commerce, then you should have the right to register your mark with the U.S. Patent and Trademark Office (USPTO). Federal trademark registration with the USPTO has several additional benefits over simply maintaining common law rights.
Benefits of Federal Trademark Registration with the USPTO
- Federal registration provides public notice of your national claim of rights, and bumps out your claim of rights to everywhere in the United States (including U.S. territories), if applicable.
- Your federally registered trademark is publicly listed at the USPTO, along with the goods and services associated with your mark and other information related to the registration. The public listing itself can indirectly further support awareness of your brand.
- Your federal registration creates a legal presumption that you own the trademark and have the right to use it. The registration certificate serves as evidence of this.
- Afederal registration gives you the right to bring a lawsuit concerning your trademark in federal court.
- Once your trademark is federal registered, you can use the federal trademark registration symbol, ®, to notify people of your registration and rights. (Before a mark is registered, including during the registration process after the application is filed, you can use the TM symbol as notice of your trademark rights or the SM symbol as notice of your service mark rights. These symbols are typically placed at the upper or lower right-hand corner of the mark as a superscript or subscript.)
- After registering a mark with the USPTO, you can use the registration as a basis for registering the trademark in other countries, if desired.
- If applicable, you can record your federal trademark registration with U.S. Customs and Border Protection, and they can police the border for potentially infringing imports.
If you foresee using your mark online and otherwise nationally and/or internationally, federal trademark registration can provide great benefits, and is a valuable business asset.
Our Trademark Services
We provide an array of trademark-related services, including a legal consult to help you figure out what you have, your related options and legal opportunities, and to devise a plan to develop and protect your marks; legal advice with all trademark services based on your goals and objectives; knock-out trademark searches; comprehensive trademark searches; and federal and state trademark registration and maintenance services.