Business Tips: Q&A with Bethany Whelan, Trademark Attorney
If you’ve already started your own business, you know how much paperwork can be involved! It can be quite overwhelming for a newbie to know exactly what is necessary for getting their business up and running, especially in regards to legal planning.
That’s why we asked our friend Bethany Whelan, a trademark attorney with Dority & Manning, P.A., to give our readers a quick guide on how to develop a legally sound trademark for your business.
From conducting a trademark search to maintaining and using your trademark correctly, keep reading to learn Bethany’s top 5 tips for developing a strong trademark for your business!
As you plan to start your new business, the last thing you want to receive is a Cease and Desist letter from another business who owns a Federal Trademark Registration with a similar name, product, or service. Such situations can be avoided by carefully considering the following tips.
1. Develop A Strong Trademark
First, develop a strong trademark option for your company and any associated brands. A “strong” mark is inherently and/or highly distinctive, thus immediately identifying the owner as the source of the covered products or services. In general, the stronger a mark is, the easier it is for the mark to be eligible for registration with the U.S. Patent and Trademark Office (USPTO), and to obtain protection from unauthorized use and registration by others. The strongest marks are called fanciful or arbitrary marks, and consist of a combination of letters that have no meaning, such as an invented word. Examples are GOOGLE for online services, ROLEX for watches, and XEROX for copiers. “Weak” marks are those that are generic or only describe the goods, e.g., “bikes” for bicycles. Typically, generic or descriptive marks should be avoided.
2. Conduct A Trademark Clearance Search
Second, conduct a search for confusingly similar marks. Searching first helps to ensure that the use of any proposed trademark will not infringe the rights of another party, and thus reduces the risk of any challenge or lawsuit from the owner of prior rights in a trademark or trade name. Searching will also help to determine if you can register your trademark, by considering both whether there are prior applications or registrations that might block your application. By conducting a trademark search, you can avoid expenditures where marks are not available and reduce the risk of being sued.
3. File A Federal Trademark Application
Third, file a federal trademark application. The United States Patent and Trademark Office (USPTO) encourages online filing via TEAS (Trademark Electronic Application System) on its website. The US Trademark Office accepts applications for registration of traditional marks (i.e., word, design, and combination marks) and nontraditional and non-visual marks (i.e., color, shape/configuration, sound, scent, flavor, touch, and motion marks). Remember, a federal registration requires that the mark is “in use in commerce”. Such a requirement means use “in commerce” which includes all commerce that can be regulated by Congress. Certain interstate uses qualify for use in commerce, however, certain intrastate uses may not. Accordingly, it may be important to consult a licensed professional in order to determine whether your use qualifies for federal trademark protection.
4. Use Your Trademark Consistently And Properly
Fourth, use your trademark properly. It is typically best to distinguish a trademark from surrounding text by using capital letters, bold type, italics, color, underlining, quotation marks, or a stylized format that differs from the surrounding text. Be sure to use the trademark consistently, including the same spelling, punctuation, and spacing. Further, avoid situations where you are using your trademark simply as a noun or a verb. Instead, use the trademark as an adjective that modifies the noun. Again, consult a licensed professional regarding appropriate trademark use.
5. Know The Correct Markings
Fifth, be sure to mark your trademark correctly. If the mark is unregistered, use the superscript ™ symbol with the mark on the goods, on their packaging, or on a single item of printed or electronic material advertising the goods or services. If the mark is registered, use the superscript ® symbol or other appropriate notice of registration instead. The “SM” symbol may be used to denote a service mark.
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The information provided is general information, not individualized legal advice. Your use of this information is not intended to create, and does not create, an attorney-client relationship with Dority & Manning, Attorneys at Law, P.A. or any of its attorneys. This web site and/or information displayed herein is not an offer to represent you. Do not send us technical or legal information until you have contacted one of our attorneys and obtained authorization to do so.
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