As discussed in the post that began this series on Intellectual Property, a Trademark is a distinctive design, picture, emblem, logo or wording (or combination) affixed to goods for sale to identify the manufacturer as the source of the product. When a Trademark is used to identify services, it is usually called a Service Mark. A Trademark owner may be an individual, business organization, or any other legal entity. Trademarks are located on packages, labels, vouchers, or on the product itself. Often, you will see Trademarks designated by one of the following three emblems: ™, ℠, and ®.
Selecting a Name or Logo to Trademark
Now that you are comfortable with what a Trademark is, let’s talk about how to choose designs, pictures, emblems, logos, or wording that you may want to Trademark. Entrepreneurs run into issues when they get excited by a name or logo only to find out that that name or logo is already taken. Before becoming too enamored with any name or logo, you need to check on the United States Patent and Trademark (USPTO) website (www.uspto.gov), to see if is already taken. If it is taken, especially if it is by someone in the same industry, you will want to move on and keep doing this process until you land upon a name or logo that you like and is not already taken.
A Trademark must also pass two more tests: it cannot be descriptive and it cannot cause there to be a likelihood of confusion. For example, a problematic descriptive Trademark would occur in the following case: nose paper would be descriptive of tissues and therefore could not be a Trademark for a tissue product. Likelihood of confusion occurs when a name or logo are close enough to an existing name or logo such that a consumer would be confused when trying to decipher which product is which. It is always a good idea when conducting a Trademark Search to look for Trademarks that are similar to the name or logo you would like to use to ensure that you do not select a name or logo that would create a likelihood of confusion with an existing Trademark.
Once you have your name or logo, get a move on to Trademark your name or logo before anyone else has the chance. Recently, I was speaking with a founder that had to change their businesses name and all of their already completed branding to a new name with new branding because while they were creating their branding and posting it, another person with a similar idea filed for and received a Trademark for the name of the company. The founder expressed her regret that they did not file for the Trademark right away, before they spent hundreds of dollars on branded products and a website name that the company cannot use. Learn a lesson from this founder, and complete your Trademark right away. It will ultimately be worth the cost.
When applying for a Trademark you may apply either before you begin using the Trademark or you may apply after you begin using the Trademark in commerce. Applying for a Trademark already in commerce is straightforward, and only one application is needed. Thereafter, a Trademark can be granted and enforced immediately. When filing for an Intent to Use Trademark, you have 6 months to begin using the Trademark. An extension may be filed after 6 months and the Intent to Use Trademark may be extended a total of 5 times (for 3 years total). If the Trademark is not used within this time, it will return to the public domain and can be used by anyone.
Trademarks rights must be maintained through actual lawful use of the Trademark after it is registered. A Trademark owner will need to renew the Trademark every 5 years and during that renewal it must show that the Trademark is in use. A Trademark owner must enforce its right by challenging any infringement of its Trademark, unless the Trademark owner can show that the infringement was minor and inconsequential. Enforcement would entail sending a cease and desist letter to whomever is illegally using the Trademark, and if this fails to result in the removal of the illegally used Trademark, the owner of the Trademark may have to begin a court proceeding against the infringer.
Ultimately, Trademark Law is intended for consumer protection by preventing the public from being misled as to the origin or quality of a product or service. This benefits the Trademark Owner by preventing others from trying to cash in by using the same or similar mark on their product in order to sell based on the false idea that it is actually the product of the real Trademark Owner.
Entrepreneurs should take advantage of Trademark law so they become the beneficiaries of all the benefits that accrue as a brand is built around the Trademarked name or logo they select.
Are you still confused about Trademark?
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Author: Aimee Haynes
I motivate, I blog, I listen, I give advice, I help, I create, I work with others, I stand my ground when needed, and I am always open to new ideas. In addition to the qualities that define me most, I'm also a Corporate Law attorney working with entrepreneurs, creatives, and small businesses to help them achieve success..