Growing Your Business With A Trademark

Growing Your Business With A Trademark | IP Law

If you are a business owner in today’s web-world, growing a business requires a completely new level of sophistication beyond simply listing in the yellow pages. Back in 1970, a pair of “walking fingers” was a recognized logo for Bell Telephone and represented a trademark that offered a one-stop source where businesses knew they could go to connect with the goods or services of another business or anyone who owned a phone.

At that time Business realized that the walking fingers could only associate a source with goods and services but nothing more, not true anymore.

Today, successfully competing in business requires consumer access and recognition with a world-wide network identity that demonstrates to others an inherent quality to provide a better level of goods or services that can be recognized by consumers.

Generating “goodwill” behind a trademark allows your brand to show its inherent value to consumers in most areas of commerce.

Can a trademark create goodwill?

Short answer, YES. You may be currently using a particular name or logo in your business or are planning to start a new business name, product, or service. A trademark allows consumers to readily connect the quality of the business, product or service to a standardized expectation, more commonly known as goodwill. By using a trademark with consumers or the public, marketing and advertising promotes the development of your business and increases your trademark’s goodwill, all of which increases consumer recognition and long-term growth. Long-term growth establishes a reputation for your business as a quantifiable asset having intellectual property, something that is seen as represented by the excess in the price paid for the product or service or sometimes for the business itself with the takeover for a company over its fair market value.

Do I need to protect my trademark?

With goodwill comes security and risk tolerance. For example, before releasing a new product or service, you should consider your risk tolerance and any advantages that will go out the door into the commercial world, all of which represent your new product or the service offered to the consuming public whether you are an individual, company, non-profit, or other type of entity.

You should assess the status of a new trademark or the use of an existing trademark before publically releasing into commercial markets. Having a trademark properly protected and knowing the potential risks will prevent product loss before you start. You should understand the risks involved which may, in part, cause you to discontinue use of the trademark because it infringes on a similar trademark or which could also incur legal fees to defend infringement lawsuits, all of which helps in avoiding the adoption of a trademark that cannot be protected from infringement.

While sometimes it may be appropriate to consider risk tolerance in an oral or written opinion, you may prefer an oral opinion to avoid drafting fees or prevent a negative opinion from being recorded in writing. A negative opinion in writing could be used in litigation if you go forward and adopt a mark against attorney recommendation. Conversely, a written opinion could be used in any litigation proceedings to show that commercially reasonable steps were obtained to freely use the mark. A written opinion may also change a company’s marketing plans for adopting a mark.

Determining your risk tolerance involves several factors to help find your threshold in adopting a new trademark. Some factors associated with this risk may include;

a) how many marks are in the class of goods or services? The more trademarks in your trademark class based on the Nice Classification System suggests a higher risk;
b) how likely is it that your product or service is similar to your goods or services? Give yourself an honest self-assessment in comparing the equivalence between the two products or services;
c) are there existing trademarks that may have an alternative meaning in another language? Compare the similarity of the marks themselves based on their meaning, phonetics and appearance; and
d) are you in an area having very litigious trademark owners or would this open your business to trademark bullying, defined recently by the USPTO as the annoying practice of a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.

An attorney can provide an opinion to temper those risks, some which would be associated with the availability or legal use of a trademark for the new product or service.

Do I need a federal registration?

Use of a trademark is not legally required. The (“TM) symbol provides no legal meaning and can be used without registering. While every state allows you to obtain a trademark registration in their state, a federal trademark registration with the United States Patent and Trademark Office (USPTO) provides the greatest rights, having advantages not normally considered. A federal registration will grant you trademark rights throughout the country, and not just in one particular geographic locality.

Unlike patents or copyrights, federal trademark registrations do not expire after a period of time but will persist so long as the you continue to use the trademark in commerce.

State registrations tend to be less expensive and often take less time to apply for and register. Expense and time differ for a federal registration. Under the Lanham Act, a federal registration that predates another’s use of a confusingly similar trademark has superior rights to use the mark throughout the United States, regardless of whether the other party obtained a state registration or was first to use the mark in the state. Under the Supremacy Clause, a federal registration will always trump a state registration if there is any conflict between the two.

How do I apply for a federal trademark registration?

While a federal trademark registration typically protects the brand or logo used with your business or related goods and services. A federal trademark registration might be considered a means to formally identify goods or services as being from a particular source.

Applying for a federal trademark registration requires classifying your mark as either a standard character mark or a stylized/design mark, or even a sound mark. Your mark must clearly identify the precise goods or services to which the mark will apply. You should always search the USPTO database to ascertain whether anyone is already claiming trademark rights that could be similar and used on related goods or services through a preexisting federal registration. You will then need to determine the filing basis as either a trademark currently being used in commerce or a trademark where you intend to begin using at some point in the future.

In general with a successful registration, you have the right to use that mark in the United States, including in states where a subsequent (“junior”) state mark is registered. Once the federal registrant enters the junior’s market area, the junior must cease to use the mark. Furthermore, the federal registration itself is constructive notice of your right to use the mark across the entire United States.

The USPTO filing fees range from $225 to $375 per registered class of goods or services.
The USPTO strongly encourages you to use a U.S.-licensed attorney to guide you through the application process.

Having an appreciation of the benefits and uses of a strong trademark may provide you with the brand recognition and improved value you need to get any pair of “walking fingers” running for your growing business.


New Ideas In The New World | IP Law

Joseph F. Aceto, Ph.D.,Esq. Attorney at Law.