When the Name’s the Game,
You’d Better Protect It

Strategy

Registering your mark not only protects you from someone stepping on your good name, it is universally seen as a mark of permanence. It’s your brand for goodness sake! People just take you more seriously when they see a ®. In the United States, companies receive common law rights when they begin a business, which extend to the area of operation. However, federal registration gives notice across the country.

Assignments

Conducts a trademark search as the first step in the process. An attorney can be hired, but a preliminary search can also be done through the web site of the U.S. Patent and Trademark Office (PTO), www.uspto.gov. You can find out whether anyone has rights to your proposed company and product names and logos—and what industry is represented. Similarities do not typically represent a problem if there is little likelihood of confusion concerning the source of a good or service.

If your trademark search uncovers no apparent conflicts, your lawyer will complete an application on your behalf. The application includes name and address, a mark depiction and/or specimen, a list of specific goods or services that apply and the basis for filing, i.e., sworn statements that the mark is currently in use in commerce or that there is a bona fide intent to use it in commerce.

Determines whether the minimum filing requirements have been met and forwards the application on to an examining attorney. During the legal and procedural review, the examining attorney will search for conflicting marks and examine the written application. If there are no objections, a notice of publication is sent by the PTO, followed by a notice of allowance and an affidavit of use. A registered trademark is usually granted within a year from the search date, if the steps have been carried out in a timely manner.

Coaching Points

• Words or phrases, symbols or devices, such as a smell or color, can all carry registered trademarks. A servicemark has an identical definition, except that the mark denotes a service rather than a material product, and is used by ad agencies, utilities and other service providers.
• The symbols TM and SM are unofficial. They are used when a company intends to register the mark, however TM and SM do not carry the substantial benefits of registered marks, or ®. Federal registration precludes other users from acquiring rights to a mark after the filing date. There are fewer business risks. You gain statutory rights and access to the federal court system. In other words, your property becomes more defensible.
• Trademarks are valuable assets. They represent the goodwill of your business and can have phenomenal value, even assisting a company in raising capital. It’s wise to protect such bankable securities.
• If you anticipate the possibility of global operations, it will be cost efficient to register your trademark in foreign countries, as well as with the PTO. Unlike the U.S., where common law provides “first-to-use” rights, many countries use a first-to-file protocol.
• Once you have a registered trademark, its term of registration is 10 years, renewable indefinitely. Between the fifth and sixth years of the first term, a company needs to declare that it will continue to use the mark.

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