WHAT’S YOUR TRADEMARK IQ?

Naming a business, designing a logo, writing a company slogan; there are many elements involved in building a company brand, and many of these elements can and should be trademarked.  However, before you consider choosing or registering for trademarks, let’s discuss some myths surrounding trademarks and what any business owner needs to know to avoid these misconceptions

• MYTH: Trademarks, copyrights, and patents — they’re all the same.

FALSE: Although trademarks, copyrights and patents all fall under the intellectual property umbrella, they protect different property rights.  A copyright protects original works of authorship, while a patent protects an invention.  A trademark, can protect words, designs, sounds, smells, even colors – virtually any identifier used by a manufacturer to distinguish its goods or services from those of others.

• MYTH: I searched Google and Yahoo and no one’s using it so it’s available.

FALSE: Google and Yahoo are great search engines, but they only bring back the most common results by keywords in your search.  Searching the internet is barely scratching the surface of business names. Search engines are designed to spit back the most relevant results meaning that similarities in sound, appearance or meaning are going to be missed.

• MYTH: A trademark has to be registered before protection starts.

FALSE: Although registering a trademark is always a great idea, protection of the trademark actually begins when the symbol or name is first used on a product or service.  Even though you are granted trademark protection prior to registering, you are only granted implicit protection in your geographic area.  It is always best to register trademarks to achieve nation-wide protection.

• MYTH: A ™ and an ® are the same.

FALSE: A ™ is a designation that puts third parties on alert that you are using the mark in connection with your goods and services. This symbol may be used while an application is pending or if common law rights have been established. The ® designation, on the other hand, may be used only if you own a federally registered trademark.

• MYTH: I own the domain name, so I own the trademark .

FALSE: Merely registering a brand’s domain name does not mean that you have acquired trademark rights to that term.  The URL merely registers the Internet address. Trademark rights can be availed by either registering the mark on a Federal basis with the United States Patent and Trademark Office (USPTO), with a State Registry, or by using it in common law practice. 

• MYTH: I incorporated the business name with the state, so I own the trademark.

FALSE: Corporations just like LLCs, partnerships, etc. are simply forms of organizing a business and have nothing to do with obtaining exclusive rights to a trademark or brand recognition.  Just because a business name was successfully filed does not mean that the name is available Federally or in any other state.  To obtain nationwide protection, it is important to file a trademark application with the Trademark Office.

• MYTH: My trademark should describe my product or service.

FALSE: The essential function of a trademark is to identify the goods and services of one seller and distinguish them from those sold by all others. Therefore, a mark may not be entitled to protection if it is determined to be (1) merely descriptive of the goods or services to which it relates, or (2) the generic term for such goods or services.

• MYTH: My business is too small to worry or spend money on trademark protection.

FALSE: Businesses, no matter how large or small, are concerned about the legal availability of their business name. It doesn’t matter if you’re a solopreneur or have thousands of employees – having your business name comprehensively researched is your responsibility.

• MYTH: My business name is so unusual – there’s no way someone else has the same name. 

FALSE: This is a risky assumption given there are millions upon millions of business names.  Names needn’t be exactly alike to be considered an infringement, and similarities in sound, appearance or meaning are going to matter.

• MYTH: My brand name is spelled differently from another company’s so it’s okay for me to use it.

FALSE: Most definitely not. If your trademark sounds the same or similar to another company’s name, that’s a problem.

So there you have it, reasons to protect your brand name or logo through federal trademark registration. There are other reasons including protecting your brand value and hard earned marketing dollars. For more information concerning trademark law, the trademark registration process, or for questions concerning your particular mark or brand, please contact us.

About the Author:

Author: Andrew A. Gonzalez, Esq. is an experienced attorney with over thirty years in practice.  He focuses attention on business and intellectual property matters and provides services to commercial and individual clients who need to effectively compete in a business environment.  For more information, call 914 220-5474 or email gonzalez@golawny.com.