By Brian Considine.
In today’s ultra-competitive marketplace, a company’s name, branding elements and unique products/services are what distinguish it from thousands of other competing businesses. These trademarks and service marks can have enormous value for a company, whether it is a start-up, multi-national corporation, or a nonprofit, and every company should take steps to ensure that its “intellectual property” is adequately protected. Dawda Mann attorneys have helped dozens of companies – including global automotive suppliers, manufacturers, tech startups and local businesses – do just that.
While it is always advisable for a company to use the services of an experienced law firm, there are certain steps a start-up can take to ensure that its marks are protected from infringement by other competing businesses.
Do your Research
First, when selecting a logo, company name, or the name of your goods and/or services, choose one that is unique and distinctive. The United States Patent and Trademark Office (USPTO) only protects “fanciful, arbitrary and suggestive” marks. A fanciful mark is one that has been made up (ie, XEROX), an arbitrary mark is a commonly used word but has no relation to your product (ie, Apple for computers), and a suggestive mark is one that vaguely describes the product or services (ie, Quick-Dry). Marks that are merely descriptive (marks that are comprised of a person’s name, a geographic location or a quality of the product or service you provide are afforded the least protection and may be unregisterable with the USPTO.
Second, make sure the mark you have selected is not being used by another business in any way. The easiest way to do this is to perform Internet searches for the mark and then review the results one by one. Pay attention to names that look and sound similar or that are in a different language. For example, given the existing trademark for “La Croix” for bottled water, you probably would not be successful protecting “Cross,” “Crucifix” or “Holy Cross” for a similar product.
Third, using the USPTO’s TESS database, look to see if another company has already registered your mark. Again, you should look for marks that appear or sound similar to yours or are spelled in a different language. If there are similar prior registrations, don’t despair, look at the description of goods or services to which the mark applies; if they are different from your goods and services, it may still be possible to register it with the USPTO.
If your mark has been taken, you’ll need to rethink a new plan of attack for your business or consider pursuing trademark coexistence agreements. If your mark is available, you can move on to the next step – registration with the USPTO!
Once you’ve determined the availability and feasibility of protecting your mark, you can begin the process of registering your mark with the USPTO by filing an electronic application on the USPTO’s website.
A trademark application requires that you provide a legally acceptable identification for your mark and can be a challenging process if you decide to take it on solo (especially with soundmarks or a complicated logo/mark) so you should consider hiring an experienced law firm in those instances. Once this application is completed, you’re another step closer to having your mark protected.
Watch your Application
After the trademark application has been submitted, it could potentially take a year or longer to be approved–depending on the trademark you’re applying for. That being said, it’s important to check the status of your application regularly in case additional information or documents are needed. Oftentimes, the USPTO attorney examining your application will issue an office action noting some deficiency or requesting a clarification. These office actions should be promptly responded to, otherwise you risk abandonment of your application. Shepherding trademark applications through the registration process is something Dawda Mann attorneys excel at. In the interim, you can still use your mark as you conduct business.
Once you’ve completed the process of registering your mark with the USPTO, the USPTO will issue a certificate of registration with a date of issuance and renewal dates. These dates are critical to keeping your registration active and failure to renew the trademark during the renewal period could result in loss of a trademark registration. You’ll need a partner who can track these dates and who knows how to protect your company’s marks from companies who may try to use them. That partner is Dawda Mann.