Make It Part of Your Business Strategy
The first step in branding is developing a corporate logo. Many companies jump into that process before thinking it through, and one of the risks of not planning ahead is the possibility of trademark infringement. Have you researched your choices for company name? It’s entirely possible someone else already has that name, is doing business in your market space, and exists in the same geographic area.
Before you go any further into brand development, it’s wise to consult a trademark attorney, who will advise you on how to protect yourself and your company’s name. To get answers to the most common questions clients ask, we recently met with Yvenne King, legal counsel and business consultant with over 25 years of experience.
Who are your clients and what do they need from you?
YK: “I represent companies in a variety of industries – technology, retail, finance, sports and entertainment, publishing, design, and marketing and communications. I focus on business, corporate, intellectual property and technology law. I advise my clients on the creation and exploitation of intellectual property, including trademarks and copyrights, and structure and negotiate contracts, such as deals related to professional services, strategic alliances of all types, outsourcing, marketing and licensing.
What are the risks in NOT pursuing a trademark search?
YK: “Clients need to protect their investment in the branding, design and development of logos, website content and print collateral. Oftentimes, a company starts selling their product under a certain name without knowing that a competitor is using or has already trademarked the name and logo. You could lose all of that money and effort in creating a new brand if it turns out you’re infringing on an existing trademark, or what you use ends up being a ‘weak’ mark because of its prolific use by others. So it’s well worth the time and cost to hire an attorney to perform due diligence for you by researching your brand beforehand. In other words, your trademark strategy should complement your branding and business strategy.”
How do you determine what to protect in a trademark?
YK: “First, a trademark consists of a word, phrase, symbol or design, or a combination of these items. A company uses a trademark to identify its goods or uses a service mark to identify its services. For purposes of this interview, we’ll refer to all trademarks and service marks as ‘trademarks’.
“Next, a company should always go through the analysis of whether it can protect the words of a trademark separately from protecting the symbol or design (e.g., the logo, graphics or artwork) of the trademark. For example, the word ‘nike’ is a trademark, and the ‘nike swoosh’ is also a trademark, and both are protected and registered separately, as well as in combination with each other, with the federal government.
“Ideally, a company should always protect the words in a trademark, and then consider protecting the design elements if the logo is unique and valuable. Sometimes, a company is not able to protect the words if the words are too common or describe the goods or services. In such cases, the alternative is to protect the design, either along with the words or just the design itself. Each situation is different and must be looked at on a case by case basis.”
And once you figure what should be protected – the words, the design or both – then is this when you research the trademark?
YK: “Yes. We search for prior use (i.e., existing trademarks); possible confusion with another company’s trademark; and the value or uniqueness of the proposed trademark that the client wants to use. There are four types of trademark rights in the United States: 1) common law rights, 2) state rights, 3) federal or U.S. rights, and 4) foreign or non-U.S. trademark rights.
“The type and scope of the trademark search will depend on the type of trademark rights the client can obtain with the proposed trademark.”
What is the process when filing for federal trademark protection, which means that the client wants to federal trademark rights to that it can use its trademark throughout the U.S.?
YK: “For my clients, I start with a preliminary online search for direct hits using the major search engines. Then I move on to a formal search, where the attorney submits the brand, product or services to a professional database company, which has access to all state and federal databases, the Internet, business and association databases, phone books, and industry-specific databases. Pending trademark applications also have to be considered, since the applicants will secure trademark rights from those applications once theregistration process is complete, provided the subject trademark is registrable.
“Then the results of the formal search are reviewed and analyzed. The legal question to consider is: Is it more likely than not that the public will find our client’s mark to be confusingly similar with an existing or pending trademark? Hopefully, the result is that our client has a trademark of value, which means that it has been analyzed to be unique, fanciful or arbitrary.”
How long is a trademark good for?
YK: “In the U.S., federal trademark rights connected to trademarks registered with the federal governmet last for ten years at a time – then it comes up for renewal and the trademark owner needs to file required documents before the end of each ten-year period. In general though, whether a trademark exists under common law, state or federal law, rights to a trademark lasts as long as the company or owner is using that trademark in its business. So, if a company abandons its trademark by no longer using it, or cancels its trademark by filing a notice with the state or federal government, then that trademark will no longer be ‘valid’.”
How about the logo graphic – the artwork itself?
YK: “The trademark rights to a logo can also be protected under common law, state and federal law. The process for protecting and registering with the state or federal government a logo follows the same process. Since the broadest trademark protection resides with the words, many clients may not necessarily want or need to protect the logo. In other words, a client may change the logo, graphic or artwork in a few years, but the name doesn’t change over the years. If, however, the graphics are unique (like the Nike swoosh) and the client intends to use it on a long-term basis, then I would recommend doing a trademark search and application for the graphics as well.”
Could a company do any of these searches without hiring an attorney?
YK: “Yes. There are canned trademark service companies out there that many people use, but be careful. Their searches are superficial (often not detailed enough), and they neither customize the analysis nor consider a client’s short and long-term business goals and strategies. You could be risking more than you think by using these assembly-line services.”
After the searches, how is the trademark application filed?
YK: “We file the trademark application with the U.S. Patent and Trademark Office. There are two ways to file: 1) ‘Use’, meaning you’ve actually started selling your product or services under that trademark; or 2) ‘Intent to Use’ (“ITU”), meaning you haven’t started selling yet, but want to “reserve” the trademark because you intend to start selling and are in the planning stages. Applications are prioritized by date, so it benefits you to start the trademark search, selection and application process sooner than later, as part of your business strategy.”
What’s the difference between a TM mark and a registered ® mark?
YK: “It depends on whether the mark is registered with the U.S. Patent and Trademark Office.
“You can use ‘TM’ on any mark that you wish to tell the public (e.g., ‘give public notice’) that you are establishing your trademark rights to your mark designate as a trademark. No state or federal trademark registration is required, and in most states this will actually give you some protection. In general you have ‘common law’ trademark rights as soon as you start using your mark, meaning selling to the public goods or services in connection with your mark.
“You can use the ‘R’ symbol only once if you obtain a federal trademark registration from the US Patent and Trademark Office. During the application process, however, you may NOT use the ‘R’ symbol (doing so is illegal). You must continue to use nothing or ‘TM’ until the federal trademark registration is issued.”
We’ll Say It One More Time: Planning Is Key
Talking with Ms. King reminded us – again – that planning is key to running any business. Having a well thought-out strategy nearly always saves money and time. In the case of selecting a strong and protected logo and trademark, planning protects your company’s business value and credibility as well.