This article was written by Jeffrey Fabian, the owner of Fabian, LLC, a Baltimore, Maryland-based law firm that assists business owners with clearing and registering trademarks, and with developing and protecting comprehensive intellectual property portfolios.
For any solopreneur contemplating a new business venture, one thing that inevitably comes to mind early in the development process is the need to adopt a unique and recognizable brand name under which to market the business’s products or services. This is rightfully so. Indeed, a protectable and recognizable trademark is one of the most important pieces of intellectual property that a new enterprise can invest in before bringing its products or services to market. This article provides a brief overview of the basic legal concerns and implications associated with adopting and seeking to register a new trademark.
As a preliminary matter, it is important to distinguish between trademarks and other forms of intellectual property. A trademark is essentially the brand—it is the name, logo, slogan or other indicia of origin that identifies and distinguishes the business’s goods or services in the marketplace. It is trademarks that are the focus of this article. By way of contrast, copyright law protects creative expressions of ideas — advertisements, publications, songs and other works that are recorded or imprinted in tangible media. Ideas themselves — if protectable at all — must be protected through maintaining secrecy and imposing contractual limitations on disclosure, or through obtaining patents.
Clearance and Selection of Trademarks
When selecting a trademark, it is important to understand that the law of trademarks distinguishes between marks that are:
4. arbitrary, and
Each of these classifications is pretty much just as it sounds. Generic marks (such as “Sweater” for sweaters) are generally not afforded any trademark protection, and descriptive trademarks (such as “Legal Services Provider” for an attorney) are only protectable under limited circumstances not applicable to new enterprises. Thus, solopreneurs seeking to adopt a protectable trademark that can add value to their business should be careful to ensure that the mark they select falls into one of the other three categories.
Equally important with selecting an inherently distinctive trademark, if not more so, is selecting a trademark that does not infringe upon the rights of the owners of any pre-existing marks. The “likelihood of confusion” doctrine prevents a business owner from employing any trademark that is likely to cause confusion amongst consumers in the relevant marketplace as to the sources of competing products and services. In addition, famous trademarks (such as Apple, Microsoft, Disney, and Coca-Cola) are afforded even broader protection, in that a business may not adopt a trademark that is likely to “dilute” the strength of these famous marks. Under the dilution doctrine, a trademark may be found infringing even if it is used in connection with goods or services that do not directly compete with those offered by the famous trademark owner.
As a result, it is absolutely critical for business owners to conduct the necessary clearance research in order to make sure that their proposed trademark is available for adoption. Importantly, beyond sidestepping imminent infringement lawsuits, undertaking thorough trademark clearance research will also:
1. help ensure that there are no adverse or unsavory connotations or connections associated with the proposed trademark; and,
2. help raise the business owner’s confidence in adopting the mark and beginning to use and develop it before registration is obtained. Even if an existing trademark owner does not pursue an infringement claim, a trademark examiner at the United States Patent and Trademark Office (the “USPTO”) may still find that the proposed mark is too confusingly similar to a mark that is already registered, and deny registration as a result.
Basic trademark clearance research involves examining the USPTO’s registration and application records, and searching the Internet for any business or product names that may raise an issue of confusion with the business’s proposed trademark. While existing trademarks that are not registered with the USPTO will typically not act as absolute bars to registration for similar marks, these unregistered marks still have priority with regard to certain rights, and — especially with e-commerce — these “common law” rights actually have the potential to be quite broad.
If quick searches on USPTO.gov, the WhoIs database and Google (or any of the other popular online search options) do not reveal any existing marks that appear to be clear bars to registration, then the next step is to hire an experienced trademark attorney who can conduct a more thorough search and, if the mark appears ripe for registration, complete and prosecute the registration application.
Filing for Registration
Trademark registration applications are filed with the USPTO. The USPTO now offers online applications and immediate credit card processing. These features are actually quite important because they allow for immediate filing, and because the date of application is the operative date for determining priority of rights.
There are several critical aspects of the trademark registration application that require careful attention and consideration. First and foremost, the application must adequately and accurately describe the goods or services in connection with which the mark is intended to be used. If the mark will be used with multiple products or services (for example, as the name of a business that has numerous product offerings in different lines), then the application must cover all applicable “International Classes,” and each product or service within each International Class must be accurately described in the appropriate location. This may also have an effect on the total filing fee for the application (which is why many of the automated online services either appear misleading or simply provide deficient service).
In addition, all applications must be filed on either an “intent to use” or “actual use” basis, depending on the current stage of the mark’s development. Each of these bases has distinct additional filing requirements, which, if not completed properly, can result in denial of the application. Moreover, a premature filing on the basis of “actual use” can result in refusal of the application and forfeiture of the filing fee.
Once a proper registration application is submitted, assuming there are no extraordinary issues to address, there is relatively little additional work to be done and the time to registration is typically somewhere in the ballpark of nine months. In the meantime, if appropriate clearance research has been performed, the business owner can go ahead and move forward with developing and promoting the new trademark in connection with its goods or services.
Benefits of Registration
As alluded to above, registration affords important benefits not available to unregistered trademarks. Registration provides national priority of rights to use the trademark in connection with the goods or services for which the mark is registered. Stated differently, after the effective date of the registration, any business owner located anywhere in the United States can be stopped from using a confusingly similar trademark on competing products or services. The registration also provides notice to would-be infringers of the exclusive rights held in the mark, and this works to proactively stave off potential acts of infringement. Moreover, in the event of actual infringement, the registration provides significant leverage for getting the infringer to cease their illegal activities.
Registration of trademarks also helps add legitimacy to a business (and allows for use of the “®” designation), and builds value in the business when it comes time to sell and move on to the next opportunity.