“Do I need a trademark for my business?”

Many business owners ask me this question.  The good news for many of them is they already have a trademark.  If your business has sold goods or services using a non-generic word, phrase, or symbol, and there is no similar business that started using the same or a confusingly similar mark before yours, chances are your business already has common law trademark rights in that word, phrase, or symbol.

The real question is: does it make business sense for you to register the mark with the United States Patent and Trademark Office?  As discussed in this post, there are often sound business reasons to obtain a trademark registration.

TIMING

What if you have a great idea for a trademark, but are concerned that you may not be able to start selling goods or services using the mark in time to get common law trademark rights?  It used to be that if you desperately wanted to have trademark rights in a certain name, you had to rush to market, using the mark to make “bona fide” sales of your goods or services.  If another company beat you to market – even if they made sales a few days before you – they had the trademark rights and you lost the benefit of at least some of your marketing plan.  Now, you can file an “intent to use” (ITU) application which, if approved, essentially gives you trademark rights as of the day of filing, providing you later submit proof that you actually made sales of the goods or services using the mark.  You generally have three years from the filing to provide such proof in the form of a “Statement of Use.”  Once you submit such proof, your trademark rights are enforceable, and “relate back” to the date you filed the ITU application.

If you want to obtain trademark rights in a word, phrase, or symbol before you start doing business, submitting an ITU application is the only way to go.

COMMON LAW versus TRADEMARK REGISTRATION

But if you have common law rights in a trademark, why register it?  There are several advantages to trademark registration.

First, you put the public on notice that you claim the rights to this mark.  In practical terms, this means that if someone else is not aware of your business, and they want to go into business with a mark similar to yours, selling the same or similar goods or services, they will likely be deterred from using your mark after finding it at the Trademark Office website.

Second, should you ever need to sue to prevent another’s use of the mark, having a registration allows you to bring an action in federal court.

Third, if you have a registered mark you are more likely to obtain enhanced penalties against any counterfeiters who may use your mark (including treble [triple] damages and attorney’s fees).  Many in the apparel industry find this especially useful, since counterfeiting is rampant and enhanced penalties mean that counterfeiters risk losing more than all their profits from infringing sales.

Fourth, having a registration on file gives greater credibility to your position that the trademark rights in your company are settled.  This may be very valuable to you several years down the road should you choose to sell your company.  Along similar lines, if you ever have the opportunity to offer your business in the form of a franchise, a registered trademark is invaluable.  That is why many restaurants and other retail establishments are eager to register their marks.

THE REGISTRATION PROCESS

If you choose to register a trademark, the first step you or your attorney will undertake is trademark clearance.  This simply means checking to see if anyone is using the mark to sell similar goods or services.  The similarity of goods or services is important because there may not be a likelihood of confusion if two marks are used to sell different goods or services.  A hypothetical example would be “Wizard” grape soda and “Wizard” camping equipment.  It is unlikely that the average consumer would think that the same company offered both grape soda and camping equipment.  Therefore, if you wanted to sell grape soda using the “Wizard” mark, you probably need not have any concern if your search turned up someone selling “Wizard” software services.

(I should also mention that there are times when another company is using a mark to sell very different goods or services, but you still should not attempt to use a similar mark.  This is true where a mark is “famous” because very high volumes of sales are made using the mark, or because the mark has widespread commercial recognition.  “Coca-Cola” would be an example of a product with very high volumes of sales and “Rolls Royce” would be an example of a product with widespread commercial recognition.  If one were to sell “Coca-Cola” motor oil or “Rolls Royce” candies, the owners of these marks would very likely bring suit for an injunction and damages based on the theory that the new user was “diluting” their famous marks.)

Back to trademark searches:  Although the best practice is to order an expensive trademark search through search services such as Trademarkscan, or have an attorney conduct a preliminary search for you, a business owner can often eliminate marks that are clearly already taken by conducting a preliminary trademark search of their own.   It is much easier to perform your own search for a mark comprised of a word or phrase than a symbol (an example of a trademarked symbol is the famous Nike “Swoosh”).  Although I recommend that you hire an attorney to ensure that your trademark search is comprehensive, you may be able to eliminate some word or phrase trademarks from consideration by performing your own search.

If you would like to conduct your own preliminary search, the first place you should look is the TESS Database on the Trademark Office website (http://tess2.uspto.gov).  If you have a word or phrase you intend to use, you can use the simple search to determine if someone else is already using the mark.  You also have to eliminate “confusingly similar” marks.  (The owners of marks that appear, sound, or have a meaning similar to your potential mark may be able to claim that your proposed mark infringes theirs.)  Taking the “Wizard” grape soda example, you may want to search for “Wizzard” or “Wyzard” as well in order to clear the mark you would like to use.

The second place you should check is Google, Yahoo, and probably a few of the smaller search engines such as Lycos.  I typically begin by just searching for the mark in the search engine.  If there are too many results, you may be able to refine the result by adding an ampersand (&) and another word (or phrase in quotes) following the mark.

The third place to look is Facebook (for both goods and services) and searching “companies” on LinkedIn (particularly for personal or professional services).  You may want to search other social or career networking sites that are targeted toward your goods or services.

The fourth place to look is state trademark registries.  You probably shouldn’t attempt to search all jurisdictions, but it may be worthwhile to Google “Trademark search [insert state here]” and see if anyone has registered your proposed mark in your state, in neighboring states, or in states that are known for the type of industry you are in or contemplating entering.

If you get through these searches and don’t find any identical or confusingly similar marks, you probably have a good candidate for a mark that is not taken yet.  If you want to proceed with registration for the mark, you will probably ask yourself whether to apply for the mark yourself or to hire an attorney.

CAN I DO THIS MYSELF?

Now, I don’t want you to think of this post as one long advertisement for my services.  I pride myself on being ethical, and that often means telling potential clients that they shouldn’t pay me or any other attorney to pursue a potential case or other legal matter.  You may want to use a do-it-yourself reference to apply for a trademark yourself.

The problem with do-it-yourself services is that they often don’t emphasize the fact that you are likely to get what is called an “Office Action” from the trademark office in response to your application.  This is essentially a letter from the Trademark Office stating that your application is provisionally denied, and providing factual or legal reasons why the application is denied.  You are given six months from the issuance of the Office Action to respond.  If the Trademark Office accepts your response it may issue the registration, or issue another office action, probably to address minor issues.

There is a good chance you will receive an Office Action.  In my experience as a trademark practitioner, more than two-thirds of applications result in an office action.  Every trademark practitioner I have spoken with shares this view.  Often, the application is initially refused because the mark may be confusingly similar to another mark.  This means that the mark bears too much similarity in appearance, sound, or meaning to a previously existing mark.  In some instances, this might be avoided by changing the proposed mark (if it is an ITU application).  In other instances, this can be avoided if the applicant establishes that it actually had a prior date of first use.

It may also be that the sought-after mark is considered “generic” or “descriptive.”   A “generic” phrase is one which tries to use the name of a product to indicate its origin.  An example would be “apples” as a mark to sell “apples.”  A generic phrase can never have trademark protection.

A “descriptive” mark is one which merely describes an attribute of the good or service.  An example might be “Sweet Juicy Apples” to sell apples.  A descriptive mark can only obtain trademark protection if it has acquired what is called “secondary meaning.”  “Secondary meaning” usually is acquired after a particular seller of goods and services pays for extensive advertising, so that the public knows, in our example that “Sweet Juicy Apples” are from a particular grower, and not merely to describe characteristics of apples.

There are numerous other, more complicated reasons why the Trademark Office might issue an Office Action.  For example, an applicant seeking to brand durable plastic lighters as “TITANIUM” might receive an office action providing that the mark is “deceptive misdescriptive,” because the lighters are not made of titanium metal.

Given the high number of office actions, business owners might want to think twice about filing trademark applications without the assistance of an attorney.  Though the application is simple on its face, there are pitfalls that can be avoided.

For example, an applicant may not think of every qualifying use, and state a date of first use which comes after a competitor’s mark.  Having provided a later date of first use, the applicant may have a hard time making the factual case for priority against another mark.

CONCLUSION

In summary, trademark registration is a valuable tool for many businesses.  It heightens confidence that a registrant will be able to continue using their business name without competitors attempting to steal goodwill, or falsely claim a superior right to use a mark.  Accordingly, business owners should carefully evaluate the process of filing trademark applications.