When to file for a trademark is also dependent upon another factor – the type of trademark you want. If you are only conducting business in one state, then a State trademark is most appropriate. However, you CANNOT file for a State trademark until you are already up and running. If you conduct OR are planning to conduct business in at least 2 states OR between the US & any other country, you can file for a Federal trademark. The USPTO does provide you the ability to file for the mark before you start selling or if you’re only selling in one state. To complete the registration process, you will have to make a sale outside of your state of residence and provide them proof of doing so.
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:
- USPTO – Preliminary Search of Federal trademarks http://tess2.uspto.gov/bin/gate.exe?f=tess&state=tbmkb6.1.1
- http://biztaxlaw.about.com/od/research/a/Sec_of_state.htm –A listing of all Secretary of State web sites
- http://www.thomasnet.com – Must register (free) to search their database
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Category: Intellectual Property