The Important Do’s and Don’ts of Trademark Law

When creating a new business and business name, you as the owner should be aware of a few important considerations in terms of trademarks and trademark law. Some simple steps can be taken that will spare you significant headache down the road.

Many new business owners make the mistake of only checking with the United States Patent and Trademark Office (PTO) with respect to a possible business name. If the name is not registered with the PTO, the owner may adopt the name and expend considerable resources in establishing their brand. Unfortunately, according to trademark law, name usage is stronger than name registration.

For example, if someone happens to be using your proposed business name and has it listed in the telephone book, this establishes a pattern of usage that may trump any lack of registration with the PTO. You may then be forced to abandon the name you spent much time and effort in establishing.

To avoid such a scenario, a more comprehensive approach to trademark investigation is necessary. Two companies are well known for their trademark resources and investigations – these are CT Corsearch [link to] and Thomson CompuMark [link to]. These companies will not only check the PTO office for registration, they will also check the telephone book, corporate filings, and state registrations. Obviously new companies must also be sensitive to Internet name usage in the form of domain names and digital marketing, which is a part of any modern trademark investigation. Only with this thorough approach can a new business owner make sure their desired name is truly available and conflict-free.

Choosing Your Name

Another stumbling block for new owners is choosing a name which is most protectable. United States law recognizes four distinct classes of names. A “generic” name brand – soda, tissue paper – is not protectable at all. One step up from generic is a descriptive name. These names merely describe the product or service being offered. If you named your computer store COMPUTER SUPERSTORE, you are merely describing your business within the name. Descriptive names generally cannot be registered, and are rejected for PTO registration.

The third class involve common names used in an uncommon manner. This would include Apple Computers, which combines two common items in an uncommon way. Finally, there are the most protectable and distinctive class of names, fanciful names. Starbucks Coffee would qualify under this class. These names are either completely made up, or they have clearly uncommon and unusual associations.

Filing for federal trademark can take two years. If you file for Federal Trademark, you can use the sign TM after the name and this practice will give you some measure of protection. Then, when you get the approval, you can change the TM to a circled R, indicating the word or phrase is now registered.