There are many
instances when small businesses are sued because their business names are so
similar to trademarked names. How can businesses avoided this problem? What
do you suggest they do when they are starting to think of their business
names?
From the outset, the small business owner should make certain that
the name they want to use is legally available. This cannot be stressed
enough. The expense in ensuring the name is available is far less than the
costs associated with having to go through a name change, never mind the
costs associated with a lawsuit. There is no point in investing your time,
money or effort into a name that is not legally available to you.
The naming
of your business could be one of the most important business decisions you
make. In deciding upon a name, keep the following in mind:
- Your industry:
What types of names are being used in your industry? What do you like and
not like about these names? What is your business' identity?
- Your short and
long term goals: Don't limit yourself based on geography or product lines in
the event that you expand your scope.
- Your customers: You want customers to
remember you, so keep it memorable, pronounceable and preferably, easily
spelled.
When a small business files a trademark application with the U.S.
Patent and Trademark Office (USPTO), does that protect their business name
only within the US? Is it possible for a small business to protect their
name from use in another part of the globe, or will the cost be too
prohibitive?
Correct, a Federal trademark extends to the US only. However, a
Federal trademark registration can be used as a basis to obtain registration
in other countries. Filing for trademarks in other countries is really only
relevant if you are currently selling or intend to sell in those countries.
It's all about your customers. If you're selling to customers in the US, how
relevant is it really to you that a similarly named business is selling only
in Russia or Japan or New Zealand?
After you've submitted your trademark
application with the USPTO, do you need to file with the state?
Not at all.
Filing with the USPTO grants you trademark protection throughout the entire
country. Some businesses do opt also to file State trademarks as the
respective State governments are a lot quicker with the filing process than
the Federal government.
After registering a name, how can a small business
maintain that trademark and upkeep the value of the company or product name?
There are no trademark police. It's every applicant's responsibility to
protect their trademark. For instance, Google ® has gone to great lengths to
be certain to let writers, editors, et al, know that their trademarked name
is not a verb (e.g. you use the search engine Google ® but you do not Google
® for something). The small business owner should have this same mentality
though, of course, will be operating on a much easier to manage level.
To
protect your trademark, have comprehensive research conducted every 2-3
years to look for infringers. If infringers do pop up, contact a trademark
attorney and start discussing cease & desist letters.
To upkeep your
trademark, pay attention to dates! There are forms and renewals that must be
filed to keep your trademark active. For State trademarks, this is typically
every 5 years or every 10 years. Of course, check with your state to be
sure. For Federal trademarks, the first deadline is at the 5 year mark. The
first renewal is at the 10 year mark and then every 10 years. You can keep
your trademark indefinitely as long as you pay attention to those dates.
Any
other advice you can give about protecting business names?
Whether your business is citywide, statewide or nationwide, your name is
likely to be an important, if not the most important, facet of your
business. You are essentially protecting your market upon registering a
trademark by publicly individualizing your name. This protection allows a
greater piece of mind for the average business owner, by ensuring that no
one may interfere with your customer base by confusing their business with
your own.
Definitely have comprehensive research conducted but prior to doing so,
take advantage of the free resources that are out there. When conducting
preliminary research, look for the exact name but also look for any names
that are similar in Sound, Appearance or Meaning. This means looking for
spelling variations (e.g. PH for F, Y for I, K for C, etc.), synonyms (e.g.
if your name contains the word EXPRESS, also look for fast, quick, speedy,
etc.) and word placement (e.g. if you've got more than one word in your
business name, flip flop them around).
Here are recommended resources:
Shannon Moore is the General Manager for TradeMark Express. Since 1992,
TradeMark Express has met the needs of their clients with comprehensive
research, application preparation, attorney referrals and trademark
consultation. For further details, please visit us on the web at TradeMark
Express, call Shannon directly at 800.340.2010 or via email at Shannon at
http://www.tmexpress.com .
