It’s All in the Name
when selecting the name for your business, new product or service plan, you should take special care. You are in the world of trademark law.
A trademark is a word, logo or package design—or combination of these—used by business to identify its goods and distinguish them from others. While trademarks identify products, service marks identify services. For example, Big Mac is a trademark, while McDonalds is a service mark.
Trademarks/service marks are a valuable asset to a company. As soon as a mark is registered, its value will likely exceed the cost of registration. Good will and value increase with each day’s use, each advertisement and each sale.
From a legal perspective, you should follow these steps when selecting a trademark or service mark:
1. Carefully select your mark. It is important to remember that not all product or service names are entitled to trademark protection. For instance you are never able to protect generic marks such as "aspirin" or "car wash." Descriptive names are difficult to protect as well, such as "Sarasota Software Consultants." Better marks are words that are suggestive (example: Quickflex), arbitrary in relation to the product or service (example: Apple Computer) or fanciful (example: Verizon). If you are concerned that your potential customers will have no idea what your product or services are if you use a completely made-up word, then you can add descriptive words to your overall mark (example: Verizon Internet Services).
2. Request a clearance search. If another company has priority rights, your use of the mark may be deemed infringement. It is crucial to have a clearance search performed by a qualified lawyer to determine if this is the case. If so, you may want to select another mark before investing years, or even months, of your company’s good will in the mark.
3. Consider an Intent-to-Use Trademark application if there may be some time between marketing preparation and use of the mark. Such an application may reserve the mark from the filing date while the mark is not in use yet.
4. Obtain the domain name and any similar variations. For example, if your business is going to be called "Bee Sting Computer Services," consider beesting.com, beesting.net, Bsting.com, beestings.com, beestingcomputer.com and so on. This will help reduce problems with potential copycats down the road.
5. Send out the press release and start marketing the name (using the name in commerce in connection with your business). Use in commerce is necessary to establish trademark rights.
6. Obtain a federal and state registration if you decide not to use Intent-to-Use. Neither federal nor state registration is mandatory, but has several advantages.
The advantages of Federal (U.S.) registration include these: It confers nationwide priority from filing date, puts nation on notice of your rights, increases remedies if infringement were to occur, lists you on search reports of others, provides evidence of validity and ownership and a basis for registration in foreign countries (the Madrid Protocol makes registering in multiple foreign countries, based on U.S. registration, much easier than in the past), allows you to register with U.S. Customs, and allows for easier license/transfer of title.
State registration also has advantages. For instance, Florida’s State TM statute has teeth and may be a useful alternative, especially if you do not plan to do business or expand outside of the state. Registration is typically quick and more inexpensive than federal. Federal registrations, however, generally take precedence.
Douglas A. Cherry, Esq. is board certified in intellectual property law and an associate attorney at Shumaker, Loop & Kendrick, LLP in Sarasota.