If you want to grow a successful business, you need to give serious thought to your trademarks (your name, logo, and slogan).
On the one hand, you need to make sure your marks are unique so you can prevent others from using your marks in their marketing. And on the other hand, you need to pick marks that won’t infringe the rights of other businesses.
Here are five things you really need to understand about trademark law:
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1. Trademark rights stem from use in commerce
Trademark rights don’t stem from obtaining a trademark registration in most situations (but registrations are recommended, see #5 below).
Rather, they stem from use in commerce. So when you begin using a unique mark to sell a specific good or service, you’ll gain “common law” trademark rights to that mark and you can then prevent other businesses in your geographic area from selling similar goods or services using a mark that is identical or “confusingly similar” to your mark.
Conversely, if your mark is confusingly similar to an existing mark that someone used on similar goods or services before you, they can claim you are infringing their rights and may be able to force you to stop using your mark.
2. You can’t protect generic marks
When naming your good or service, avoid using generic or descriptive marks.
That’s because you can’t protect a generic mark (“BBQ”) and, although you can protect descriptive marks (“Holiday Inn”), it is much harder to do so.
The theory here is simple – if you could protect these marks, other companies wouldn’t be able to describe their goods and services.
What you should aim for is suggestive or arbitrary marks, which are protectable. A mark is suggestive if consumers would need to use some level of imagination to understand the connection to the good or service (“Coppertone” sunscreen), and it is deemed arbitrary if it doesn’t have any logical connection to the good or service (“Apple” computers).
3. Trademark infringement only requires “likely confusion”
Trademark infringement occurs when consumers are likely to be confused as to the source of a specific good or service. Practically speaking, this means that if you start using a mark that is likely to cause consumer confusion because of an existing trademark, the owner of that existing trademark can force you to stop using your mark and you may even be liable for monetary damages.
Of course, if you pick a unique mark that you can protect, then you can use trademark law to prevent other businesses from infringing on your rights. As a result, your trademark may be among your most valuable assets.
4. When picking your business name, always do a search
It is important that you do some due diligence before selecting your marks to make sure you don’t commit trademark infringement.
At a minimum, you need to search the uspto.gov trademark database and run some Google searches.
But what you really should do is engage a trademark search firm to run the search for you. They have more powerful search capabilities (such as searching for misspellings and phonetic equivalents) and can quickly search more databases than you (such as newspapers, trade publications, etc.).
5. You should file a trademark application
Although you can claim common law trademark rights, you are almost always going to be better off seeking a federal trademark registration with the United States Patent and Trademark Office.
First off, if you want to file a trademark lawsuit in a federal court, you need a federal registration.
But more practically, a registration gives you nationwide rights, provides notice to third parties of your exclusive rights, and it gives you the upper ground in any trademark dispute that might arise later.
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This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.
Chris Brown the founder of Venture Legal, a Kansas City law firm serving startups, freelancers, and small businesses, and also the founder and president of b.Legal Marketing, a website development and hosting platform for small law firms. You can follow him on Twitter @CSBCounsel.
