Trademark Checklist for Start-Ups and Emerging Businesses

Trademark Basics: A trademark is a word, phrase, or symbol which identifies and distinguishes the source of goods and/or services of a company from those of others. Customers rely upon trademarks as a barometer as to the quality of the goods or services provided under the mark. Trademark rights are only established by use of the mark in commerce in connection with the goods or services.

A company can accrue trademark rights in a number areas, including:

  1. Company Name
  2. Company Logos
  3. Company Slogans
  4. Product Names
  5. Product Logos
  6. Product Slogans
  7. Brand Names

As an emerging business, there are several things you should consider prior to choosing the various trademarks your business may employ:

Is the trademark weak or strong?

In general, the more descriptive a trademark, the weaker it is. A merely descriptive mark cannot be registered as a trademark. For example, a company that provides accounting software that calls itself “Accounting Software, Inc.” would not be able to register that mark because it describes the underlying good or service. (They can, of course, still use the mark but it will be difficult to enforce). Conversely, arbitrary marks tend to be the strongest. An example of some strong arbitrary marks are Apple, Google, and Twitter.

Is another company using the trademark in a similar business?

Prior to choosing a trademark, you should, at the very least, do a search on Google and the USPTO trademark database to see if, and under what circumstances, your proposed mark is being used. For some companies, a simple search is all that is needed. Other companies, and especially those where the trademarks and/or brand names are essential, should consider a more formal search. In either case, you should consult an attorney if you believe there is a competing trademark that may pose an issue. It is strongly advised (and considerably cheaper) to deal with these potential issues up front.

Should you file for federal registration of your trademark?

You begin to accrue common-law rights to your trademark as soon as you use the mark in commerce. However, for added protection many companies will file for federal registration of the mark. The benefits of federal registration include: public notice, legal presumption that you own the mark and have the rights to use it nationwide, a listing in the USPTO database, and access to Federal Courts for enforcing your trademarks. Trademarks with the R in a circle ® have been federally registered and thus use the symbol to provide notice to the public.

What should you do if someone is infringing your marks or accusing you of infringing their marks?

In both cases, the initial step is do not ignore the issue. As a trademark owner, you have a duty to police your mark or you risk losing all the goodwill you have built up. Therefore, if you feel someone is infringing your mark, the best course is to consult with an attorney and consider sending a notice of infringement letter. If you receive a notice of infringement letter, again consult with an attorney and deal with the issue immediately. The majority of trademark issues can be dealt with through negotiation and agreement between the parties. Waiting to address the issue – or ignoring it completely – greatly increases the chance that a costly lawsuit could be initiated.

ACTION ITEMS

  1. Perform a search (or engage a trademark attorney to do one for you) prior to choosing a trademark.
  2. Exercise caution in choosing a trademark that is similar to one that others are using to offer similar goods or services.
  3. Remember that the more arbitrary the trademark, the stronger it is, and the better chance your company will have of getting a federal registration.
  4. Consider whether your company would benefit from federal registration.
  5. Police your marks and address any infringement issues in a timely manner.
Douglas Hall has been assisting businesses in a wide range of industries with intellectual property litigation and transactional matters for more than two decades. Contact Doug at dhall@lynchlaw-group.com or (724) 776-8000 for more information about trademarks or other intellectual property matters.
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