Another level of Intellectual Property (IP) safeguard focusses on the name, look and function of your company. These Intellectual Property Rights (IPR) are covered by Trademark protection.
Distinctive designs, logos, words, expressions and symbols identify a company and its products and services. Protecting these rights is accomplished by formally registering a Trademark. Doing so gives the owner a legal right to prevent their unauthorized use. When the sign, design or expression identifies a company’s services, it is known as a Service Mark.
Trademark rights are specific and limited. They can prevent others from using a similar Mark, but do not prevent others from making the same goods or from selling the same goods or services under a clearly different mark. The US Patent and Trademark Office (USPTO) registers and issues Trademarks and Service Marks.
The basic considerations for determining whether a specific “Mark” is unique and registerable include:
- Likelihood of Confusion: the primary reason for the refusal of a Trademark application is a “likelihood of confusion” with a previously filed Trademark.
- The Similarity of Marks:
- This could include a name that is spelled differently but phonetically sounds the same or the use of a different font/graphic for a similarly spelled name.
- Even if the names and products are different, an attached logo/graphic that creates a similar look might be enough to cause a Trademark application to be rejected.
- Relatedness of Goods or Services:
- The goods or services of the applicant are related/similar to another in a way that would cause customers to erroneously believe they are from the same source.
- The goods/services do not have to be identical, only that they are related in a way that would confuse the consumer. For example, a bank and a mortgage company.
To be valid, a Trademark must be:
- Distinctive instead of descriptive,
- Already in commercial use: for example, affixed to an item.
- Simply having the Mark in use on the website is not sufficient to satisfy this requirement.
- Registered with the USPTO or other relevant organization to obtain legal protection rights.
- You cannot register until you are already using your Mark doing business. This does create some risk because it is possible your Mark conflicts with another previously registered Mark and you will “after the fact” have to change yours.
The first step in pursuing Trademark Protection is to undertake a search of potentially conflicting Trademarks that are currently registered. The USPTO website has a free search function, however this can be very time consuming and confusing if you are not familiar with the process. In addition, there are subtle nuances of search criteria which, if not understood, could cause you to mistakenly believe that your Mark is unique, causing a rejection of your application. This would entail a revision of your Mark, re-submission and an additional fee.
The second step is to make the actual application. The USPTO website has a procedure for filing on-line. However, this is not a simple process and could consume significant time for a start-up owner which would detract from building your company.
The bottom line is that while a straightforward concept, the process is anything but simple.
This leaves a businessman with the option of turning to a professional service: attorney or filing company. There are pros and cons for each choice.
- The primary detractor for using a Patent/Trademark attorney is cost. This could entail several thousands of dollars. These resource requirements may put a strain on a bootstrapping startup.
- Alternatively, there are several companies that provide search and filing services. A web search will reveal a broad range of options.
- While not a specific endorsement, our company has had a very good experience using “The Trademark Company”.
- They assisted in understanding the process, gave relevant advice and successfully made the application. Along the way, they kept us informed of the progress of the application.
- Their fees were very reasonable for the service they provided.
Important Note: the USPTO only registers trademarks, they do not enforce their use. If an infringement occurs, it is the owner’s responsibility to seek to halt the use and pursue remedies.
A good description of the entire registration procedure for Trademarks and general information concerning Trademarks can be found on the US Patent and Trademark Office website.