Friday, March 4, 2011

The Trials and Tribulations of Trademarks

Guest blogger Donald Simon gives his best advice when it comes to trademarking your business. 

Upon reading a recent article about Target’s trademark troubles in Canada, I was reminded of the importance of selecting a strong business name.  A strong trademark or service mark (the “mark”) allows a business to build goodwill and brand reputation in the goods or services it sells.  A weak mark may sideline your marketing efforts and might even entangle you in expensive legal battles.  Selecting a legally strong mark in the early stages of your business can save you from a lot of future headaches.

So, what is a trademark?  According to the U.S. Patent and Trademark Office (“USPTO”), a trademark is “a word, phrase, symbol, or design, or a combination of words, phrases, symbols, or designs, that identifies and distinguishes the source of the goods of one party from those of others.”  A service mark identifies a service instead of a product.  Simply stated, a mark is a brand name and probably the most important asset your business will ever own.

In general, the more distinctive a mark is, the wider its scope of protection will be.  Marks can be categorized as having varying levels of strength or distinctiveness from coined terms like KODAK or EXXON, which receive the highest legal protection, to generic terms like “clock” for timepieces, which receive no protection.  In short, your customers must be able recognize the mark as distinguishing your goods or services from those of others. 

Before adopting a new mark, it is advisable to make sure that no other business in your industry is using it or something confusingly similar.  If you adopt a mark that is the same or similar to an existing mark, you may be liable for infringement.  To avoid this, you should conduct a search of existing marks in your industry.  This can be accomplished in two phases.  The first phase consists of looking for exact matches of your proposed mark in the USPTO database and on the Internet.

If your proposed mark survives USPTO and Internet searches, then you can begin phase two: a full search of existing and pending registrations and of unregistered prior users.  USPTO and Internet searches alone are not enough to determine whether a mark is available for use.  You should hire a professional search firm (such as Thomson) to conduct a full search and hire a trademark attorney to interpret the results.

Once you have a high degree of comfort that the proposed mark is free, start using it!  Your right to prevent others from using it starts the moment you first adopt it and use it publicly and you do not have to register a mark in order to exert your rights.  However, registering your mark with the USPTO has several advantages, including:
  • public notice of your ownership claim;
  • ability to initiate an infringement action in federal court; and
  • legal presumption of your exclusive right of use.
With regard to trademarks, the old adage applies: an ounce of prevention is worth a pound of cure.  Don’t let trademark troubles sidetrack you from Thinking Big!

Written by: Donald R. Simon, J.D./LL.M., is president and CEO of Simon Business Consulting, Inc., a firm providing consulting services such as business and marketing plan development, incorporations, intellectual property advising, franchising regulatory assistance, and presentations on the basics of starting a small business.  Send questions or comments to  This blog is provided as a source of information and is not to be construed as legal advice or opinion, or to form an attorney-client relationship.  For legal advice, please consult an attorney.

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