C3 Patent and Intellectual Property Law

May082009 | Steve O'Donnell

Choosing a trademark

A business' identity is likely its most important asset. It embodies all of the business' accumulated goodwill and assures purchasers that new products are of the same high quality as other products sold by the business. Unfortunately, if you don't plan accordingly, you might not be able to protect your brand, or worse yet, lose money over a bad decision.

A common life of a brand name begins when the business owner first thinks of it. Sometimes it's clever, often it is <ahem> less clever. The owner then starts using the name on everything, often marking it with a trademark symbol, next comes a business bank account and an accountant. The accountant, maybe working with a business lawyer, maybe not, files the appropriate paperwork with the department of state to register the business. Any required licensing is obtained and there is a grand opening. After the initial rush of things that most obviously have to be done, comes the consideration of other things, like brand identity, that often get put off until too late.

One situation you don't want to face with your business is finding out that someone already has a trademark on the name you're using and that the money you've spend on logo/web design, business cards, stationary, signage and advertising would have been better spent building a nice, warm fire. If that's not bad enough, if you're using a name that someone else has registered, you might find yourself on the receiving end of an infringement lawsuit. Neither is good for a new business' bottom line and can fairly easily be avoided for a fraction of what it will cost to clean up a mess.

When I'm working with entrepreneurs on their startup companies I recommend that they select creative trademarks, I prefer to see marks that have no relation to the products or services that are being protected. The rationale for that is simple, if the mark has no obvious connection to the product then the chances of someone else already using it is slim. I also like to see marks that are nonsense. That further increases the chance of the mark being unique and it also helps with the chance of getting a good domain name as well as a few variations on the domain. Also, the more abstract a trademark is (as opposed to it being more descriptive of the goods), the stronger the trademark will be.

One of the first thing I suggest to people is that they find out if the domain they would like is available. If it is, great, register it. If it isn't, then the question is if the business will be adequately served with some strained variant of the desired URL. If “[business name]” isn't available will “[business name][state]” or “[business name]'online'” be adequate? The answer to that depends, to some extent, on what the plans are for the business and how much internet marketing the business requires.

I prefer to get the domain name first because there are a number of businesses in the business of grabbing domains and reselling them to someone that will actually use them. For that reason, type the URL you want into your browser's URL bar and DON'T use a registrar's search to find if it is available. Also, since the internet is such a pervasive marketing tool, if the proposed mark hasn't found its way into a URL, the chances of it being successfully cleared are probably pretty good.

Once the URL is purchased then comes the actual trademark search. What steps your attorney needs to do differs on whether you need a state or federal trademark as well as on other considerations. If you have no plans of doing any business across state lines, then a state search might be all you need. If you plan to offer your wares across the country, then a federal registration is more useful. The internet has enabled just about everyone to operate in national and international commerce, so federal registrations are becoming more prevalent then the were a decade or two ago.

Once the trademark search is done, and your name is “cleared,” get a trademark application on file and start using it as soon as you can. If things go well, you'll have clear ownership of your trademark all across the country and your brand's reputation will be secure.

The best way to ensure that your brand is really yours is to engage a trademark attorney as soon in your business planning as feasible.

Of course, things don't always go according to plan, and sometime. . . too often, a business will invest in branding itself and start operations without considering that they might be stepping on someone else's toes. Also, there is a possibility that a search will miss something, after all it is impossible to prove a negative. Thankfully, that doesn't necessarily mean that all is lost, but ways of working through that will have to wait for a another post on another day.