So, you found a name you like, now how do you keep it? An intro to trademarks for entrepreneurs

By: Alex Phillips

There aren’t many things as important, and unfortunately, as overlooked, in the world of small businesses as trademarks. For many entrepreneurs, the trademark application process can seem rather daunting, but it is important to start it as soon as possible. Below are some of the most important things to understand when creating a trademark for your new company.

WHAT ARE YOU PROTECTING WITH YOUR TRADEMARK?

Trademarks help you protect the goodwill that your company obtains throughout its existence, as well as distinguish your products from those of your competitors. Essentially, trademarks are there to protect consumers, making sure that they know what products or services they are getting, and who they are getting them from.

WHAT GOOD WILL REGISTERING YOUR TRADEMARK DO? 

It is worth mentioning that you do not necessarily need to register a trademark, because standing to sue is based on the use of the trademark, not registration. That being said, in most situations, it is preferable to have your mark registered with the USPTO. Registering also gives you enhanced benefits, some of which are mentioned below.

One of the biggest benefits of registering your mark with the USPTO is that there is nationwide constructive notice of your use of the trademark. This means that at trial, any infringing party in the U.S. will automatically be deemed to know that you are using your trademark in commerce.

A second, albeit less exciting benefit, is that you can use ® next to your trademark, showing that it is federally registered, and possibly deterring would–be infringers. You can still use “TM” to provide notice if you don’t register, but that’s all it does.

HOW LONG CAN YOU KEEP YOUR TRADEMARK REGISTERED AND PROTECTED?

In most cases, you can keep your trademark protection as long as you show that you are still using your mark in commerce consistently (you need to file forms with the government telling them how much you’ve used your mark every so often.[1])

You can also lose protection by allowing others to freely use your mark. Be careful who you let use your mark, and make sure you oversee that use.

WHAT DOES YOUR COMPANY DO OR MAKE, AND WHY DOES THAT EVEN MATTER?

The field your new company is in or will be in is an important part of creating and registering a trademark. This is because other companies being in that field may affect what marks you can choose. (For example, zigzag piping, and zigzag backpacks).

WHAT MAKES SOME TRADEMARKS “STRONGER” THAN OTHERS? 

One of the most important rules of thumb to keep in mind with trademarks is that the more your mark describes your product or service, the weaker it is. In essence, this means that it is better for you to be as creative as you can when coming up with your mark.[2]

WHAT IS A TRADEMARK SEARCH, AND HOW DO YOU CONDUCT AN EFFECTIVE ONE?

Conducting a trademark search essentially means looking to see if the trademark you intend to register is already in use. As odd as it may sound, the first step you can take in conducting an effective trademark search is simply searching via internet search engine the mark you would like to register. Then search the USPTO’s official search engine to look for that mark and marks that will be either visually or phonetically similar.

WHAT IS TRADEMARK INFRINGEMENT AND HOW CAN YOU KEEP FROM COMMITTING IT? 

Trademark infringement occurs when you use a mark that is similar to a mark already being used by someone else. Committing trademark infringement can be a costly endeavor with the litigation that follows. The best way to avoid infringing on another person’s mark is to make sure that you are effectively conducting your trademark searches and being as creative as you can be when creating your mark.

HOW CAN YOU APPLY FOR TRADEMARK REGISTRATION?

To apply for a trademark, your mark needs to be at least descriptive of the goods/services that your company provides. If the mark is merely descriptive, then it needs what courts call “secondary meaning.” “Secondary meaning” is when a mark establishes a connection between your company and a product or service. Because of this requirement, it is better that your mark is suggestive (requiring an imaginary leap to relate to product/service), arbitrary (unrelated to product/service), or fanciful (an entirely made up word).

Once you have a distinctive enough mark and have done all of your searches, then you can file an application and accompanying fees with the USPTO.

Following the filing of an application, the USPTO examiner may either deny the application or point out issues to fix in order to get it passed.  If, and when your application has been granted, it will be publicized on the federal register and opened for challenges (if challenges arise, you can either abandon your mark or defend it). If there are no challenges in 30 days, then the trademark will be registered.

FOOTNOTES: 

[1] Specifically, you need to file section 8 declarations of use between the 5th and 6th years after registering your mark along with a specimen showing how you are using your mark in commerce, and you need to file for renewal every ten years.

[2] In many cases, a mark can be too weak to register in the first place. For more on distinctiveness, see Abercrombie & Fitch Co. v. Hunting World Inc., 537 F. 2d 4. This case creates the Abercrombie spectrum, which consists of Generic on the weak end, Descriptive, Suggestive, and then Arbitrary/Fanciful on the strong end.

This post was originally posted here on February 6, 2019, and has been reproduced with Alex’s permission.


SOURCES:

Kaufman Fasttrac: Trademarks 101 for entrepreneurs https://www.fasttrac.org/blog/trademarks-101/

IP Watchdog: What Entrepreneurs Need to Know About Securing and Protecting Trademarks https://www.ipwatchdog.com/2018/10/07/trademarks-entrepreneurs-need-know-trademarks/id=102067/

Abercrombie & Fitch Co. v. Hunting World Inc., 537 F. 2d 4.

IMAGES: 

https://www.google.com/search?q=protection&source=lnms&tbm=isch&sa=X&ved=0ahUKEwj44b7P5JjjAhVLLs0KHcFWA2kQ_AUIECgB&biw=1275&bih=657#imgrc=ioHOuIEITfqJyM:

https://www.google.com/search?biw=1275&bih=608&tbm=isch&sa=1&ei=TqQcXeSJC4fWtAbCvavwCA&q=search+on+computer&oq=search+on+computer&gs_l=img.3..0j0i5i30l2j0i24.68749.70854..70943…0.0..0.128.1680.11j6……0….1..gws-wiz-img…….35i39j0i67j0i8i30.kN_PtTuELXk#imgrc=PcXms_BlgdWrxM:


Alexander Phillips, at the time of this post, is a rising 3L at Penn State Dickinson Law planning to graduate with a certificate in Entrepreneurship Law and a concentration in Intellectual Property. He currently lives in Maryland, and hopes to one day practice trademark law in Washington, DC.

Author: Prof Prince

Professor Samantha Prince is an Associate Professor of Lawyering Skills and Entrepreneurship at Penn State Dickinson Law. She has a Master of Laws in Taxation from Georgetown University Law Center, and was a partner in a regional law firm where she handled transactional matters that ranged from an initial public offering to regular representation of a publicly-traded company. Most of her clients were small to medium sized businesses and entrepreneurs, including start-ups. An expert in entrepreneurship law, she established the Penn State Dickinson Law entrepreneurship program, is an advisor for the Entrepreneurship Law Certificate that is available to students, and is the founder and moderator of the Inside Entrepreneurship Law blog.