Make Your Mark: Selecting and Protecting Your Brand
Nike, Xerox, Kleenex….what do these words have in common? Immediate association. The association between a word and product allows consumers to identify a particular product with a particular source of the goods. It’s also what makes a trademark one of your company’s most valuable assets. A well selected mark distinguishes your product or service from the goods and services of your competitors. Select marks wisely and once selected, protect them.
Pick a Distinctive Mark. There are a few dos and don’ts in selecting a distinctive mark. Do pick a mark that is simple and easy to pronounce, is appealing to the eye and ear, and fits with your business plans. Select a name that is broad enough to encompass future business expansion. Don’t use people’s names; they’re not memorable and tend to be fairly narrow in scope. Try to stay away from geographic names, as they’re difficult to protect. To ensure your mark is unique, avoid terms that merely describe the goods or services, and keep in mind that generic nouns cannot function as trademarks. Try inventing a word or combining words in an unusual way. For example, consider how many goods and services are sold under the brand UNITED, which is a relatively weak trademark, versus the immediate name recognition afforded by the brand KODAK.
Check Availability. Once you have identified a mark you want to use with your goods or services, you need to check whether someone else is already using it to avoid the possibility of an expensive legal suit. The first place to check is the Secretary of State’s website (filinginoregon.com), especially if your business name is going to be the same as your mark. When you search the Secretary of State’s website, you should also review the assumed business name registrations. Many people think an assumed business name registration gives them some rights in a name. Not so. Rights in a name, whether a business name or trademark, are derived from use of the name in connection with the business or in connection with the sales of goods or services.
Next, check for availability by searching the internet. If you find someone else already using the name, try to determine if it is used in connection with goods or services similar to yours. If you plan to do business using the internet, also check the availability of the domain name. If the name that is your top choice is in use, you may want to consider alternative spellings, other choices or different top-level domains (e.g. net or org).
If you don’t find a match with a general search of the internet or the domain registrars, you should search the website of the United States Patent and Trademark Office (www.uspto.gov). If you find an application or registration with a matching or similar mark, the application or registration needs to be evaluated to determine if it is active and to assess what goods or services are connected with the mark.
Protect It. The general rule is that the first to use a mark in connection with certain goods or services has the senior rights to that mark. If you intend to use your mark only within a particular state, you may be able to register the mark with the state and protect the mark in that state. If you want to register the mark federally, you must use it in more than one state or in international commerce. One basic misconception is that a federal trademark registration restricts any other use of the registered name or mark. In fact, trademark and service mark registrations are obtained under a specific class or classes of goods or services. The standard is whether the names are confusingly similar, or stated another way, whether there is a possibility that the consumer would be confused as to the source of the goods.
Consult an attorney. Even though you have done your homework and have searched for potentially conflicting marks and company names, there are many legal nuances to consider. An attorney who practices in the area of trademark law can provide guidance. Money spent early for legal consultation could save you greater expenses and headaches down the road.
Trademarks can be powerful business assets. Care and attention in choosing and protecting your mark can set your business apart from the rest.
Lorie Harris Hancock is an attorney at Karnopp Petersen LLP. In
addition to trademark law, she focuses her legal practice in
the areas of business law, intellectual property and licensing,
mergers and acquisitions and corporate finance and securities.
For more information about Lorie or Karnopp Petersen, go to www.karnopp.com.