If you are starting a business that provides goods or services, then registering a trademark is an important and often overlooked step in building your business. A trademark is a sign of your business’s quality and helps distinguish you from your competitors. However, if you do not navigate the registration process carefully, you could wind up wasting precious time and money.
What Is a Trademark?
To identify your business as a source for particular goods or services, you would normally use a combination of designs, symbols, a slogan or a name. These distinguishing marks are known as a trademark, but it does more than identify your business. A trademark also carries the reputation of your business with it, so you want to choose your business mark carefully.
How Strong Is Your Mark?
Choosing a strong mark not only sets your business out from the others in your industry, it is also a key factor in obtaining trademark protection. Generic trademarks like direct names of goods and services, such as “Basketballs” or “We Sell Bikes”, cannot be registered. Trademarks that are descriptive and suggestive are a bit better, and you can make a case for registering them. However, the best trademarks are creative and unique, “VWI Financial” or “Starkco Needles” for example. These strong marks immediately distinguish your business from others, making them easier to protect. The business with a unique trademark isn’t going to be mistaken for one of its competitors, and that is also important for registering your trademark.
Why Likelihood of Confusion Matters
If your mark is likely to be confused with another company’s mark, then your trademark registration will probably be rejected. To determine if your mark is confusing, attorneys for the U.S. Patent and Trademark Office (USPTO) rely on two factors. Whether your mark is similar to another business’s mark and whether the goods and services provided by each business are related.
For example, if you have the mark “Jim’s Work Jeans” but an already established company is called “Jim Werks”, the USPTO may find your trademark confusing. The fact that “Jim Werks” makes shoes, while your company makes blue jeans could also be confusing. The USPTO would likely reject your application due to similar sounding names and both businesses dealing in a type of clothing item. In that instance, you would not only be denied trademark protection, you would also lose your application fee and the time it took for your application to be reviewed.
Check Registered Trademarks
Ensuring that your mark isn’t confusing is a key part of figuring out what the mark of your business is going to be. To help in this process, the USPTO has a Trademark Electronic Search System you can use. You may also check with your local Secretary of State’s office to see if there are any business names similar to the mark you are considering. Though not all business names are trademarks, trademarks can be business names. U.S. trademark protection is granted to the first entity in an area and industry to use it, whether that mark is registered or not.
Why Should I Get an Intellectual Property Attorney to Help?
Failing to do your due diligence or trying to register a trademark that has already been claimed can result in the loss of your application fee. Even if you were the first business to use a mark, without registering it, you become open to other companies exercising their trademark protections. In these situations, having a competent intellectual property attorney by your side is critical.
Here at Winghart Law Group, our Redwood City intellectual property lawyer Drew Winghart has experience setting up and protecting trademarks. He will work with you to help you determine the best trademark for your business, and help you ensure it meets the complex guidelines laid out by the USPTO. For more information about trademarks, trade secret protection and copyrights, call (650) 332-2994 for a free 30-minute consultation.