Understand the basics of trademark law and how to protect your small business.
by Beniam Biftu
Note: This article originally appeared on hvacrbusiness.com. It has been republished here as a resource for our readers.
Your trademark is one of your business’s most valuable assets. Failure to protect your trademark could result in lost sales and injury to your business’s reputation. Unfortunately, many business owners incorrectly believe incorporating a company under a particular name or registering a domain name will give them exclusive rights to use that name. This article explains the basics of trademark law and how to protect your trademark.
What Are Trademarks and Why Are They Important?
A trademark, sometimes referred to as a company’s brand, is a symbol that distinguishes your company’s products and services from those of your competitors. Trademarks could be words, logos, shapes, sounds, colors, smells, designs, jingles, or any combination thereof.
Your company’s reputation and goodwill are embodied in your trademark. Whenever you advertise your product or service it is very likely that you will present your trademark to the prospective consumer. Presenting to the consumer a logo or tagline is one of the most efficient commercial communication tools ever created to capture consumer attention and make your products or services stand out from your competitors.
Your company’s reputation and goodwill are embodied in your trademark.
Trademarks also help maintain customer loyalty. It allows consumers to cut through the clutter and purchase goods and services they know have a particular quality and standard. If consumers are pleased with a particular brand, they can simply look at the brand, rather than sift through and carefully examine the labels, packaging, or workmanship every time they make purchasing decisions. The trademark encourages consumers to purchase the product or service again because they know what to expect before making the purchase.
The Trademark Registration Process
Although filing a federal trademark application may appear simple, many applications are rejected for failure to comply with the law’s many requirements and strict deadlines. The main requirement applicants fail to meet is that their trademark is confusingly similar to another registered trademark. To prevent the rejection of your trademark application on this basis, it is highly recommended an attorney conduct a comprehensive search.
Many business owners incorrectly believe a simple search on Google or even the USPTO database is sufficient to determine if someone is using their trademark. However, a Google or USPTO search for the identical mark is not adequate. If a competitor uses a mark for similar goods and services in a manner that is likely to confuse consumers as to the source of a product, trademark law allows the initial user to stop the latter user from using the mark, even if it is not identical. A proper search will find identical marks and trademarks that might share a similar pronunciation or commercial impression.
Many business owners incorrectly believe a simple search on Google or even the USPTO database is sufficient to determine if someone is using their trademark.
Even if a search does not reveal any conflicts, your application could still be rejected if you fail to adhere to any of the other numerous legal requirements. If your application is rejected, the federal government will issue an office action. Failure to respond to all the issues raised by the examiner in the office action within the given time will result in the abandonment of your application. Many times a carefully crafted legal argument will cause the examiner to change his mind and approve your application. For example, federal law does not permit the registration, on the Principal Register, of a trademark that is primarily merely a surname. However, MCDONALD’S is a surname and it is protected by a federal registration. How was the rejection overcome? The attorney can supply the examiner convincing evidence that consumers recognize the mark as a brand, as opposed to a descriptive term. Through long-term use and extensive advertising, the surname has become primarily associated with the restaurant.
Finally, after all the requirements are met, you must draft the application. Trademark applications are deceptively simple. On their face, they appear to ask seemingly innocuous questions. In reality, the answers could have long-term ramifications for one of the most important assets of your business. There are many pitfalls in filing the application and thus it is highly recommended that business owners consult their attorneys. In fact, a recent study published in the Stanford Technology Law Review determined trademark applicants represented by attorneys are more likely to have their applications approved. The small price you pay now for securing federal trademark registration may save you a great deal in future legal costs.
Please note: This article is for general information purposes only. It does not constitute legal advice, nor does it form an attorney-client relationship.
Mr. Beniam Biftu is a trademark and copyright attorney, counselor-at-law,and the founder of Biftu Law LLC (www.biftulaw.com). His firm was created to provide exceptional and affordable trademark counsel to small business owners and large international corporations. Mr. Biftu also helps up-and-coming artists, writers, musicians, and app developers secure and enforce federal copyrights.