If you’re starting a business, the last thing you want to do is invest time, energy, and money into branding your company without clearing your name or logo. You could be sued, forced to change your name or logo, or have difficulty registering the name or design with the U.S. Patent and Trademark Office (USPTO).
Here are 3 ways experienced trademark counsel can help you launch your business:
1. Make sure your trademarks are distinctive
Only distinctive trademarks (marks that serve the purpose of identifying the source of goods or services) are entitled to federal trademark protection. There are two ways that trademarks can be distinctive: they can either be inherently distinctive or they can acquire distinctiveness over time. Only inherently distinctive trademarks can seek immediate protection on the Principal Register. We call those trademarks “arbitrary,” “fanciful,” or “suggestive.” If you don’t pick an arbitrary, fanciful, or suggestive business name, you may encounter difficulties registering it.
The Trademark Manual of Examining Procedure section 1209.01(a) provides some good definitions and examples for these types trademarks:
- Fanciful marks – these include words that are either unknown (giving examples like PEPSI or KODAK) or that are out of common usage. These trademarks are invented for the sole purpose of being a trademark.
- Arbitrary marks – these use words that are in linguistic use but when used with the identified goods/services of the trademark do not describe those goods/services (giving examples like APPLE for computers or OLD CROW for whiskey).
- Suggestive marks – these require imagination or thought to reach the goods or services identified by the trademark (giving the example SPEEDI BAKE for frozen dough because it “only vaguely suggests a desirable characteristic of frozen dough” that it “quickly and easily may be baked into bread”).
You want your company name to fit into one of these categories, otherwise if it is merely descriptive of your goods and/or services, primarily geographically descriptive (think Miami Law Firm for a law firm based in Miami), or primarily a surname, then it must acquire distinctiveness over time to seek registration on the Principal Register.
2. Clear your trademarks
The USPTO will refuse to register your trademark on the Principal Register if it is not distinctive. It will also refuse to register the mark if it is confusingly similar to another trademark that exists (even if that trademark is still pending registration). You should speak to an experienced trademark attorney to assist you with a clearance search before you commit to a business, service, or product name. Slater Legal PLLC offers flat-fee clearance searches at an affordable price.
3. Register your trademarks
When you create a trademark and use it in commerce, common-law rights will automatically attach. Those common-law rights are limited in scope and geography. To protect your trademarks nationwide, you should register them with the USPTO. In addition to nationwide protection, some of the benefits of federal registration are:
- Your trademark is listed in USPTO database of registered and pending trademarks;
- Legal presumption that you own the trademark and have the right to use it (in federal court, your registration certificate proves ownership);
- You can use your federal registration as a basis for filing for trademark protection in foreign countries;
- You will have the right to bring a lawsuit concerning the trademark in federal court;
- You can use the federal trademark registration symbol ®;
- You can record your registration with U.S. Customs and Border Protection (CBP) to stop the importation of infringing goods.
You don’t have to wait to register until you start using your trademarks in commerce. Experienced trademark counsel can help you determine if an intent-to-use application is appropriate for you. Contact our firm to speak to a Florida-based trademark attorney and to learn more about our flat-fee USPTO trademark application services.