By Lindsey Leibowitz
As an entrepreneur starting a business, one of the most important things you can do is come up with a great name. Amazon, Nike, and Verizon, for example, are all synonymous with the goods and services to which their names are attached. A strong corporate name distinguishes your business from competitors, and signals to customers what they can expect from your product, whether it be taste, quality, or style. While most entrepreneurs know the importance of a great name, they don’t always understand how best to protect that name. Below are several important facts which can help you better understand the trademark laws and the process to protect a name.
What does a trademark do?
A trademark identifies the brand owner of a particular product or service. A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. Trademarks can also be based on color, smell, or sound. For example, Nike owns trademarks for the term “NIKE”, the swoosh logo, the phrase “JUST DO IT”, as well as countless other marks which allow consumers to identify products made by Nike.
How do you know if your name is safe?
Before using a mark, it is recommended that a search be conducted. There are two types of searches – a preliminary search and a comprehensive search. The preliminary search is done using the U.S. Patent and Trademark Office (the “PTO”) database and it is useful in determining that there are no direct conflicts. A comprehensive search is performed by specialized search companies and covers a much larger database beyond what the PTO maintains.
How do you register a trademark?
Once you’ve determined that your mark is available, an application should be filed with the PTO. It is possible to file an application before you are actually using the mark in commerce – this is referred to as an intent-to-use application – or you can file an application based on your current use of the mark. Once the application is filed, an examining attorney at the PTO reviews the application. If the examining attorney approves the application, the application will be published. During this publication period, any third parties who believe they may be affected by the registration of your mark may file an Opposition Proceeding to challenge the registration of the mark. If no oppositions are filed, the application will proceed to registration in due course. However, you must begin using the mark in commerce prior to obtaining a registration.
Why do I need to register my trademark?
A registered trademark gives the owner exclusive rights to use the mark with the goods or services for which it is registered. In addition, the law also allows the owner to enforce those rights against third parties who attempt to use the same mark or a confusingly similar mark.
If I register a domain name, does that give me trademark rights?
The quick answer to this question is no. A domain name registration does not confer trademark rights on the owner. They are two totally separate concepts. Having a trademark does not give you rights to ownership of a domain name, just as having a domain name does not give you rights to a trademark. As stated above, a trademark is secured by registering a mark with the PTO. A domain name registration is secured by purchasing a domain name from a domain registrar.
Once I obtain a registration, do I own it forever? Do I need to do anything to maintain it?
Registration of a mark does not mean you own that mark forever. As an owner, you need to periodically file maintenance documents during the term of the registration to show that you are still using the mark in commerce. If you discontinue use of the mark, the registration will ultimately be cancelled. Furthermore, it is helpful to have an attorney monitor the mark. If you do not monitor the mark against third-party infringement, you can lose your ability to protect the mark.
* * *
As you can see, there is considerable value to protecting your trademark, especially when you are building a new business. One of the biggest assets a business can have is a consumer’s recognition of your brand and what it is you have to offer. Protecting this asset is one of the most important things you can do for your business.
For much of the past decade, Jeff has been recognized annually by his peers as a New York “Super Lawyer”
Bob is an experienced class action lawyer, who has achieved hundreds of millions of dollars in recoveries for aggrieved
Lindsey Leibowitz, Of Counsel, is an experienced Intellectual Property lawyer specializing in trademark and copyright
Amber Wallace is an experienced complex commercial litigator and a perennial Super Lawyers “Rising Star.
For over two decades, John has been litigating cases in Federal, state and municipal courts throughout New York and
Joe Licare is an experienced commercial litigator, equally adept at representing plaintiffs and defendants.