Protect your good name

Trademarks and service marks are source identifiers. They can be creative ways to distinguish your business from others and notify your customer base that particular services and goods are provided by your business. Trademarks can be fanciful or arbitrary words, symbols or designs or a combination of any of these.

Both state and federal trademark protection is available. State trademark rights are governed by the specific laws in effect in each state. Federal trademark protection is afforded under the United States Code. Those statutes define the procedures to be followed to obtain a trademark registration, as well as the remedies that are available to protect the trademark once these rights are secured.

State protection

A state trademark registration provides notice to the public and to competitors that the owner of the state trademark registration considers the trademark to be its means of distinguishing its goods or services from others in the industry. Typically, the remedies available to protect state trademark registrations are much more limited than those afforded owners of federal trademark registrations. However, to qualify for a federal registration, the goods and services must be offered and sold in interstate commerce in conjunction with the trademark, or the applicant must have a genuine intent to do so in the not-too-distant future.

For those businesses whose operations are limited to a single state, a state registration is a way of preventing competitors in that state from copying the company’s trademark. Obtaining a state trademark registration can be the first step in securing rights to a trademark on a national basis if the company plans to expand beyond that state’s borders. The state registration puts the public on notice that the company claims rights to that particular trademark within the borders of that state.

Since the procedures to secure a state trademark registration are usually less complicated and expensive when compared to the federal registration process, seeking a state trademark registration is an inexpensive way to begin staking out your rights to a trademark.

Determining your trademark

The first step in selecting a trademark is determining whether the words, symbols or designs are available for use as your business’s trademark. A business should determine if anyone else has a state or federal registration for the trademark under consideration or if anyone else has been continuously using the same or similar words, symbols or designs as a trademark.

There are trademark search firms who, for a fee, will conduct a thorough search on a state and/or national basis of the use of the same or similar trade names or trademarks by others and provide a report of the search results.

It is highly recommended that this type of search be conducted before investing substantial resources to market and advertise a company’s goods or services under a newly selected trademark. Otherwise, a business may find itself scrapping the entire marketing and advertising campaign when one with superior rights to the selected trademark threatens to sue for trademark infringement and demands that all use of the selected trademark cease.

In the preliminary stages of selecting a trademark, a business can complete some initial searches itself or with assistance from legal counsel by searching the internet, searching the website for the United States Patent and Trademark Office (USPTO) (www.uspto.gov) and searching the corporate/trademark website for the particular state where a state registration is sought. If the search results disclose that one or more third parties are using the same or a similar trademark or trade name with the same or similar business, goods or services, it is best to drop that potential name, design or symbol and try again.

Federal protection