Expert Beacon

When choosing a new trademark for your business, be sure to consult an experienced trademark attorney to ensure that your brand is best protected. As trademark law is very complex, keep the below advice in mind if you are choosing a new trademark or think someone is infringing your trademark. 

Do

  • use an attorney who is experienced in trademark law
  • conduct a trademark clearance and domain name clearance search
  • choose a strong trademark
  • use your trademark correctly
  • consider registering your trademark

Don't

  • assume that registering your corporate name with your state’s Secretary of State will give you a registered trademark
  • choose a mark that is prohibited by law
  • go at it alone if a trademark dispute arises
  • allow your trademark to become generic
  • allow instance of trademark infringement to go unchallenged

Do

Do use an attorney who is experienced in trademark law

A lot of small businesses make the mistake of assuming that any attorney can adequately advise them on trademark issues. Trademark law, as well as intellectual property law in general, is a highly specialized area of the law, with many nuances that take years of practice to appreciate. Just because your lawyer knows corporate governance doesn’t mean that he or she will be able to give you good advice regarding protecting your company’s brand. Be sure that you use an attorney who has experience helping companies with their trademark issues.

Do conduct a trademark clearance and domain name clearance search

If you select a corporate, product or internet domain name, be sure you can actually use it. Small businesses can make substantial investments in a new brand only to find out that someone else owns a State of federal trademark registration for the brand name or something similar. Likewise, start-ups can choose a business name only to find out later that someone else is using the company’s domain name. A thorough trademark and domain name clearance search by an experienced trademark attorney can help avoid these problems before you make an investment in a brand or corporate name. Such a search can cost a few thousand dollars, but in the long run it is money well spent.

Do choose a strong trademark

Not all trademarks are created equal. The five categories of trademarks are listed below and are in the order of strongest to weakest:

  • Coined or fanciful marks are marks that have no intrinsic meaning. Exxon is a good example of a coined mark.
  • Arbitrary marks use ordinary words but the words are not ordinarily associated with the products, such as Apple for computer of Amazon for an online retailer. Coined and arbitrary marks tend to be strong marks.
  • Suggestive marks are marks that are associated with the product. Although a suggestive mark may not be as strong of a mark, it can become stronger through use as the mark acquires distinctiveness.
  • Descriptive marks are marks that give the consumer an immediate idea of the qualities or characteristics of the goods or services. Descriptive marks may also become stronger through use as the mark acquires distinctiveness.
  • Generic marks are simply a mark that is the only way to refer to a product. Generic marks are not protected.

When choosing a new trademark, be sure to consult with a trademark attorney regarding the strength of the mark that you want to use.

Do use your trademark correctly

Whether you have a registered or unregistered trademark, it’s important that you use it correctly. For example, if your trademark is a brand name for a type of goods, you should always use the mark in conjunction with the generic description of the goods (i.e., iPod® media player, Nike® athletic shoes, Xerox® copier). Another example is that you should never use your mark as a verb, since this can potentially render your trademark generic. Xerox has spent years trying to educate the public that it shouldn’t use the word “Xerox” as a verb for copying something. You should consult with a trademark attorney regarding the proper usage of your mark. It is also important to give proper trademark notice. If you don’t know the legal difference between using the ™ symbol and the ® symbol, you should consult with a trademark attorney.

Do consider registering your trademark

Although the use of a mark in commerce may entitle you to common law trademark rights, it is often a good idea to register your mark with the United States Patent and Trademark office and potentially with the trademark offices of States where the mark is used. Registration provides a number of advantages, including providing the public notice of your trademark and the potential to recover increased damages, profits and attorney’s fees from a party that is infringing your mark. If you are considering registering a trademark, you should consult a trademark attorney.

Don't

Do not assume that registering your corporate name with your state’s Secretary of State will give you a registered trademark

Trademark registration and corporate registration are two separate procedures. Registering your corporate name will not give you any trademark rights. Trademark registration is a specific process where either the United States Patent and Trademark Office or a State’s trademark office determines whether your trademark is eligible for registration and the benefits that go along with registration.

Do not choose a mark that is prohibited by law

Some marks will not convey any trademark rights, regardless of their strength or how they are used. The United States Patent and Trademark Office will not register scandalous or disparaging marks, such as obscenities or racial epithets. The insignia of government agencies and certain organizations, including the Boy Scouts, Little League and the Olympics, are protected by federal law. Federal law prohibits the registration of a trademark that incorporates the flag or coat of arms of the United States, any State, any municipality and any foreign nation. Federal law also prohibits registering a trademark that uses the name of a living individual or a deceased president during the life of the president’s widow without consent.

Do not go at it alone if a trademark dispute arises

You may receive a “Cease and Desist” letter from a party who claims to own a trademark and who asserts that your company is infringing its trademark. I see a lot of these letters. Some of them have merit and some of them do not. The most important thing to remember if you receive one of these letters is to not panic. The first thing you should do is contact a trademark attorney who can evaluate the letter and help you come up with a strategy for responding. The worst thing you can do is to respond to the letter without having any idea regarding the legal merit of the claims asserted in the letter.

Do not allow your trademark to become generic

Here is a list of marks that started as protectable trademarks but have since become generic in the United States:

  • Yo-Yo
  • Aspirin
  • Escalator
  • Zipper
  • Thermos
  • Brassiere
  • Kerosene

In some ways, these marks were victims of their own success. Their products became so popular that their trademark became generically associated with an entire class of products. It is very important that you make sure that your mark is used correctly in order to avoid it becoming generic.

Do not allow instance of trademark infringement to go unchallenged

It is important that you protect your trademark rights. Failure to do so can result in a loss of your trademark rights. You should be on the lookout for companies that are using your trademark to compete against you. However, don’t contact a potential trademark infringer without first speaking to a trademark attorney. Recently a number of companies have gotten very bad press for asserting questionable claims of trademark infringement. Trademark law is complex, and it is important that you seek competent advice of counsel if you think someone is infringing your trademark.

Summary

Considering the complexity of trademark law and the potential for infringement, it is important that you consult a trademark lawyer who can help you make the smartest choices for your business’ brand. In the end, speaking with an experienced attorney ahead of time can save you time and frustration, while proactively protecting your brand’s reputation.