In the rush to get to market, business owners often postpone branding and trademark considerations for the day when cash and time are less scarce. After selecting a catchy name for the business, its products, or services, today’s entrepreneurs typically acquire domain names, print business cards, design and print packaging, and start advertising. Often times, though, too little thought is given to the long game, which includes the process of establishing the company’s brand and trademarking its identifying marks, such as its name, slogan, symbol, logo, color, or even product packaging.
Unlike a mulligan in a friendly golf game, a do-over in naming a business can be costly. Infringing on another company’s mark could ensnare your business in needless conflict, if not outright litigation. These, in turn, could force a name change along with its attendant costs. A thorough trademark search early on can thus save a lot of time and money. Further, successfully registering your mark can help secure and protect the mark that separates your business from the competition.
What Is a Trademark?
There are two basic types of trademarks: marks identifying goods or products (“trademarks”) and marks identifying services (“service marks”). A trademark-whether it’s a word, slogan, sound, color, design, or symbol-identifies the source of a specific product, such as Dell (a name for a brand of computers), “Like it never even happened” (a slogan for a company specializing in fire and water damage restoration services), Audi’s four chrome-colored interlocking rings (a symbol for a brand of automobiles), and Coca-Cola’s distinctive red cursive lettering (a logo for a brand of soft drink). Service mark examples include Wendy’s (fast food service), Greyhound (transportation service), Citibank (banking services), ACLU (legal services), and NBC’s peacock (television network services). Some companies register their names as trademarks and service marks. One well-known example is Starbucks, which offers retail store services and sells coffee products.
Even without registration you can claim ownership of your trademark and put others on notice by using the “TM” designation-registered marks use the familiar “R” in a circle. The protection for unregistered marks is fairly weak, though. Your business will have a much more difficult [and expensive] time winning in court if your mark is not registered with the United States Patent and Trade Office [USPTO]. Registration on the USPTO’s Principal Register gives you the following substantive and evidentiary advantages:
Prima facie evidence of the validity of the registered mark and registration, the registrant’s ownership of the mark, and the exclusive right to use the mark in commerce in connection with the specified goods or services;
- Prima facie evidence of continued use since the filing date of the application;
- ‘Incontestability’ after five years of continuous use . . . . Incontestability precludes cancellation of the registration on the basis of prior use or descriptiveness;
- Constructive notice of the registrant’s claim of ownership of the mark;
- Nationwide rights (with certain qualifications);
- The right to bring suit in federal court regardless of diversity;
- Statutory remedies, such as mandatory treble damages and criminal penalties in counterfeit cases;
- The ability to bar importation of goods bearing infringing trademarks by depositing the registration with customs; and
- Rights under the Paris Convention, including Convention priority rights on foreign filings and the right to registration abroad based upon registration in the United States.
Kane On Trademark Law, § 6:1.1
At Fidelis Law we regularly advise business owners, entrepreneurs, creative artists, not-for profit organizations, and others. We welcome the opportunity to help you identify and protect your trademarks and service marks. Please call or email us at Fidelis Law to make an appointment or to request additional information.