Branding and trademarks are important to your business. Use this short list to decide on the kind of protection you need.

One of the really fun things we do as creative professionals is to help new businesses find interesting and unique names that will become a valuable business asset. One of our clients took the name we created and had it trademarked in the state of Massachusetts. Being a start-up, they based their decision on how much money they had available to spend on attorney’s fees.

Since then, they’ve had two interesting and common things happen to them: A colleague found a company on the Internet using the same name. A simple cease and desist order written by our client’s attorney stopped the other company from using their name. And, they received a call from a marketing company asking if they were interested in selling the name to the marketing company’s client. (His answer was, “It depends on how much money you have.”)

Since trademark protection is a concern for new businesses as well as businesses introducing new products, and since many of us don’t know the rules concerning them, we’ve summarized the guidelines concerning trademarks.

What is a Trademark?
According to Attorney Jean S. Perwin, in the October 2003 issue of HOW Magazine:

“People often confuse trademarks with copyrights and patents. But each fulfills a completely different legal function and is protected under different federal statutes. A trademark identifies goods or services. A copyright protects creative work. A patent protects an original invention.”

“The legal definition of a trademark,” continues Perwin,“is a mark representing a product or a service which assists consumers by meeting the following criteria: It’s known to them, it comes from a consistent source, it’s of a consistent quality, and it won’t cause confusion or be mistaken with another product or service.”

“The right to exclusively use a trademark begins with the use of the mark. This gives you possession of the trademark and the ability to prevent others from using it.”

“Names and logos are the most common, but distinctive features can also serve as trademarks. Some examples include Coca-Cola’s bottle, McDonald’s arches and Nike’s swoosh.”

Check for Non-Infringement
In choosing your new corporate or product identity, you’ll want to know if the name, logo or tagline infringes on anyone else’s. And, most people want to know if a trademark keeps others from using their corporate logo or other branding.

Attorney Perwin states, “From a legal standpoint, a trademark’s strength depends on the nature of the mark. General descriptive words like ‘furniture’ or ‘candy’ can’t be protected. Suggestive marks like ‘Dustbuster’ or 'Port-o-let,’ which provide some idea about the nature of the product, can be protected, but they’re often weak. Arbitrary or fanciful marks like ‘Apple Computer’ or ‘Oh Henry!’ candy bars that use ordinary words in unique ways are strong. Coined words that have no meaning apart from their products, like ‘Exxon’ or ‘Kodak’ are, for legal purposes, the strongest marks.” It pays to keep these categories in mind when making your choice.

Have a Trademark Search Done
After approving a name or logo, it’s best to have a trademark search done. You can do some of this work yourself by searching for the name on any of the major Internet search engines. It’s a good idea to have a second or third choice in case you run into a problem at this stage or further down the line. Also check the U.S. Patent and Trademark Office’s site (www.uspto.gov) to see if your name has been registered there.

But this isn’t quite enough. Before committing completely to the use of a name or logo, you should have a complete search done by a professional search firm or trademark attorney. See the resources in the sidebar for inexpensive ways of having this done. Search firms and trademark attorneys have access to extensive databases and can tell you if another name or mark exists in your industry that may confuse the public.

When applying for a trademark you must choose a specific category of goods and services to which you are applying the trademark. The common misconception is you receive a blanket trademark in all categories.

When you register your trademark in your state, you save time and money but you’re not protected on the Internet. Federal registration allows you to protect the name on the Internet and gives you rights to the exclusive use of your logo. You’ll want to consider the federal registration option if you want to expand your operations nationally.

One benefit of registering your trademark federally is that once the Patent and Trademark Office grants you the trademark, they’ll help you through the process of defending your rights to it if its challenged. Another benefit is that federal registration tends to scare people off from using names similar to yours.

According to Perwin, “Trademark registration can be a long and expensive process. (It can take nine to 18 months, and the average cost ranges from $1,500-$2,500.) It’s only worth doing if you’re sure your firm will be around long enough to derive significant benefits. Consult a trademark attorney about filing the registration.”

Trademarks are a complex issue, but depending on your vision for your company and products you can easily register at the state or federal level. Our client was relieved he had invested the time and money in protecting his mark and who knows, maybe someone will eventually come up with enough money to make him want to sell it.

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I hope you’ve found this information helpful, but if not, I encourage you to contact me if there’s a topic you’d like me to write about.

Happy Spring!

Linda E.

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Enrico Design can help make your trademark meaningful to your audience, project your values and ensure your company makes a lasting impression. To find out how Enrico Design can help keep your corporate identity, product or service branding, e-newsletters, web sites and print materials top-of-mind for your customers and prospects, visit http://www.enricodesign.com,
call 781-631-2520 or contact us by e-mail.

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