Let us take some time to discuss trademarks and what you, as an entrepreneur, should know about marks. As you may already know, a trademark is a word, phrase, symbol, or design (or combination of them) that identifies and distinguishes the source of your goods or services from other sources. In contrast, your domain name is not a trademark, although you can use your trademarked name as all or part of your company domain name as your web page address. Domain names are registered in a different way and do not confer to you any trademark rights. In addition, your fictitious name registration, or d/b/a, filed with the Florida Secretary of State does not confer to you rights akin to those provided by your trademark. So in short, the forming of your business entity, the purchase of your domain name, and the registration of your d/b/a or fictitious name do not confer to you any rights to a trademarked name.
It is also useful to attain a general understanding of the difference between a trademark, copyright, and patent. When your company invents a new and innovative technology, your company would patent the specific design of the new technology that was first invented by you and is designed in a way that would not be obvious to person having ordinary skills in the industry. There is much more to the ability to obtain a patent, but the general standard is novel, non-obvious, and useful. Your company would then copyright the original written aspects of the company website. Finally, your company would register its name and maybe a logo as a trademark so consumers can identify the source of the new patented technology and the goods and services your company provides to customers.
Returning to trademarks, there are two types of marks, a trademark and a service mark. A trademark denotes the registered use of a mark that is placed on goods and used to sell goods, where a service mark denotes the registered use of the mark associated with the delivery of services.
Your mark is established by registering either with the U.S. Trademark and Patent Office (the “USPTO”) at the federal level, or, at the state level, in Florida, with the Florida Secretary of State’s office. Even without registration, the actual use of a name and/or logo in the stream of commerce may still establish common law trademark rights. In a common law trademark situation, the policing and enforcement of the mark poses additional challenges and hurdles that your attorney can work through with you if you are currently in that situation.
The process of registering your mark establishes a legal presumption of your ownership of the mark and your exclusive right to its use. Your federal registration provides for the nationwide use of your mark, where your state registration provides rights within the borders of the state in which you register. Your federal registration also allows for enforcement actions to be filed in Federal Court, your ability to register the mark with U.S Customs and Border Protection to prevent importation of infringing foreign goods, and your right to use the federal registration symbol ®. At any point in which you begin using your name/logo and you intend to claim that name or logo as your trademark or service mark, you can add TM after the trademark name and SM after the service mark. You must refrain from using the ® until you receive final approval of your federal registration with the USPTO. Your state registration does not permit the use of the ®, it is only a federal registration symbol.
Your registration process for your trademark with the USPTO office is a legal proceeding that may often become complex and require complying with the requirements of trademark statutes and rules. Your application is reviewed by a USPTO examining attorney and while the examining attorney may help you navigate through the process, the examining attorney is are not permitted to give you legal advice. The examining attorney will review your mark for compliance with federal law. The most common reason for your mark to not be approved is the likelihood that your mark will cause confusion between the mark you are seeking to register and another existing registered mark or prior pending application by another entity.
Your trademark attorney can help you before, during, and after the trademark application. Your trademark attorney should conduct a preliminary search of other similar uses of the mark, will prepare the application and respond to any additional requests from the examining attorney, and should assist you in policing and enforcing your mark after the trademark application is submitted. During the application process, your trademark attorney provides advice as to how to optimize the protection of the mark and create the strongest possible mark. Your trademark attorney understands the scope of your mark and assists you in enforcing your mark. It is important you understand that the enforcement of your mark after registration is your responsibility. The USPTO office registers the mark, but enforcement is the responsible of you, the party that registers the mark.
When selecting your mark, you should do so with thought and care. As noted, not every mark is able to be registered with the USPTO and submitting an application that is not able to be registered results in unnecessary costs for a start-up on a budget. Even if your mark is able to be registered, thought must be given as to how difficult it may be to protect your mark legally based on the strength of the mark. Not all marks are created equal.
The strength of your mark is analyzed on a continuum scale. Your strongest mark will be fanciful or arbitrary. The best examples of this type of mark is Apple for computers and Twitter for instant messaging. These are strong marks because they describe the business with a name that is fanciful or arbitrary, meaning no one thought of computers or phones when they thought of apples many years ago. And until fairly recently, twitter was a call of a bird or a series of short, high-pitched calls or sounds. At the midpoint of the spectrum are suggestive or descriptive marks. A merely descriptive mark will often not be able to be registered unless it acquires distinctiveness, which in general takes extensive use for a five-year period or longer, or takes on secondary meaning. At the end of the spectrum, generic marks are the weakest and most often will not qualify as a legally registered mark. An example of a weaker descriptive mark would be “The World’s Best Pizza” as a mark for a pizza restaurant. A generic mark would be Pizza for that same pizza restaurant.
The cost of a weaker mark can be high over the course of your business because you may face additional costs to enforce a weaker mark and you may end up having to legally stop using the mark and select a new mark if it is successfully challenge by others. Without proper policing of your mark, your business can lose your trademark rights in your mark.
The trademark office will also refuse registration for other reasons, such as offensive or disparaging logos or words, an individual’s name or likeness, and descriptive names that may have connotations of illegal activity.
This is just a brief overview of trademarks and the registration of marks. If you have questions from the reading, feel fee to get in touch with me. I am happy to discuss specific questions with you.
To all the entrepreneurs and emerging small businesses, and all of you aiming to be better today than you were yesterday: Keep striving, keep pushing, and always remember the best is yet to come.Dislaimer: A Deeper Dive with DLT and each blog post is not intended as legal advice, nor should you consider any part of this blog or website as such. Nothing herein acts to create any attorney client relationship with the lawyers at DLT Law Group. The blog is designed to provide general information and thoughts from the lawyers at DLT Law Group. You should not act upon any information contained in this website without first seeking professional advice from a lawyer licensed in your state or country.