Intellectual Property 7

TRADEMARKS AND TRADE NAMES

What is a trademark?

A trademark is a word, group of words, name, device, or symbol used to identify goods you sell and distinguish them from similar goods sold by other businesses. It can consist of words, graphics, or letters and is used to identify a product, line of products, or all the products produced by your company. A brand name like Coca-Cola or a symbol like the multicolor striped apple that identifies Apple Computer products are both trademarks. Trademarks and service marks are protected under federal law and may also be protected under state law.

Can I trademark a service?

Yes. It is called a service mark.

Is my business name a trademark?

Your business name is a trade name. It is protected at the state or local level. If you opened up a lawn-care company called The GreenCarpet Lawn-Care Service, your next-door neighbor couldn't open a business with the same name or one confusingly similar, but there would be nothing to stop a company in another state, or depending on your state laws, another part of your state from opening up a company with the same name even if it was in the same business. If you obtain a federal registration for this term as a service mark, you could protect it from being used by other lawn-care companies in the country, something you might want to do if you want to franchise your lawn-care service, or expand the business to another state.

If I want my business name to be my trademark, do I have to register it locally and also register it as a trademark?

Registering your business name is a state or local process and is completely separate from registering a federal trademark. So if you want national protection for your name you would have to register the name locally and apply separately for trademark protection. If you don't need national name protection, registering the name locally may stop other local businesses from using the name. If you want statewide protection for the name but don't need national protection, you could register a trademark with your state. Your secretary of state's office should be able to direct you to the proper source of information for registering a name as a trademark in your state.

Are there any restrictions on what can be used as a trademark?

Your trademark or service mark can't be confusingly similar to others for a similar product or service, and it must do more than just describe a product or service. It has to give it a unique identity. You could not register the term Lawn Service as a trademark, for instance, but could probably register terms like LawnMaker or Greenlawn if those terms aren't already trademarks for similar products and services. In addition, your trademark can't be a generic term for a kind of product. Terms like photocopier or tissue can't be trademarks but Xerox and Kleenex can. In fact, you can lose your mark if it starts to be used as a generic term as in Xeroxing a document or getting a Kleenex to blow your nose. In the past Aspirin and Escalator were trademarks, but now they're generic terms for the kind of product. Major corporations wind up spending a lot of money to keep the names of popular products from becoming generic terms.

Should I invent a nonsense name or use something that reminds people of what the product or service does?

Your choice of trademark should be based on marketing factors as well as the ability to register the term. A truly unusual coined name will be far easier to protect as a trademark, since there will be little likelihood of there being similar names or marks in use. Xerox and Exxon are two familiar examples. A potential drawback of using a coined term, however, is that prospective customers may not immediately be able to identify the nature of your goods and might bypass your ads or sales literature.
On the other hand, a name that is too descriptive of your product or service may present problems, too. You may discover someone else is already using the clever name you chose, or that the name really won't be suitable if you expand your business in the future. Got It Message Center may be the ideal name for an answering service but would be inappropriate if you later decided to expand the business into a full-fledged order fulfillment service.
Thus, you might want to choose several possible names and test them out on friends and acquaintances and do some preliminary searches to see if they are already in use. If preliminary searches and feedback show the name sounds promising, then you can decide to search further if you want to use the name widely or just adopt it if it is not in use in your immediate geographic area.

How do I get a trademark?

If your mark is not confusingly similar to any others, you can acquire rights to it by using it in commerce and continuing to use it. If you can prove you were the first company to use a mark, you might be able to prevent others from using it in direct competition with you, even if you haven't registered the mark. Like copyrights, though, it is much better to register your mark.

What are the advantages of federally registering a trademark?

You gain federal nationwide protection, and if your mark was infringed, you could get federal court orders to prevent continued use of the mark. In addition, you might be able to collect money if you sued and won.

Is there anything I have to do before I start using my mark?

Before you start using your mark, you should do a trademark search to be sure no one is already using it.

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