Law-Politics
November 2004

Trademark 101

More and more small business owners are learning the value of trademarks in their business and are seeking ways to protect them. Trademark protection is becoming more prevalent, from Donald Trump trademarking the expression, “You’re Fired,” to the trademark registration of the phrase “Purpose-Driven®” by Pastor Rick Warren, the author of the hot-selling book, “The Purpose-Driven® Life.”

What is a trademark? A trademark is any word, slogan, design, or symbol that is used in commerce to identify your goods and services. Some well-known trademarks are Microsoft®; “It’s the Real Thing”; McDonald’s “golden arches” design; and the Nike “swoosh” symbol. In selecting a trademark, choose words that are not overly descriptive of your goods or services. For example, Exxon and Xerox are good trademarks, but “Fresh Seafood” and “Quality Cleaners” are not. Under trademark law, names that are too descriptive of goods or services are considered generic and are not allowed trademark registration.

What is NOT a trademark? Your DBA (doing business as) or assumed name filing does not create a trademark in your name. Nor is your incorporated name or any other legal entity registration considered a trademark. Putting up a sign on your storefront or a billboard on a busy intersection does not create a trademark. The most common misconception is that an internet address is a trademark; it is merely an address of your website. However, if you use your domain name to identify goods and services, then the domain name may constitute a trademark. While the long term use of a name may create certain common law trademark rights, the best way to protect your trademark rights is to register your name as a trademark.

Existing Trademarks. If you have been using a particular company or product name for some time, it is important to register it as a trademark so that others can’t use it without your permission. A competitor who uses a name similar to your company’s or product’s name may create confusion among potential customers and may affect the reputation you have worked so hard to establish. Suppose you have been using the name “Fat Frank’s Grub’n Saloon” for many years and one day, a competitor begins using a similar name, “Fat Frank’s Family Restaurant.” Without a trademark registration, you can’t ask the competing company to stop using its name. You are caught between a rock and a hard place. Your options are: (1) continuing to use your name and risk confusion, or (2) changing to a new name and starting over with building your name recognition, both of which options may not be acceptable to you.

New Trademarks. If you are just starting to use a particular name for your business, you may want to register it earlier rather than later to show that you are the first to use it, and also to make sure you are not infringing on an existing trademark. It would be a business disaster to spend time and money promoting a new name for a product line and then receive a cease-and-desist letter from a trademark owner demanding that you stop using its trademark.

Where to Register? You may register your trademark with the secretary of state (for example, in Texas, the application form is available at www.sos.state.tx.us and the filing fee is $50). However, a state registration is valid only in that state. If you are doing business in multiple states, you should consider registration with the United States Trademark Office. A federal trademark registration is valid and enforceable in all 50 states. You may apply for a federal trademark registration online at www.USPTO.gov; the filing fee is $335 per trademark for one international classification. In addition, you may apply for a trademark that you plan to use in the near future; this is called an “intent-to-use” trademark application, which allows you to “reserve” a trademark for future use. Once a federal trademark registration has been approved, you may use the ® symbol to signify that the trademark is a federally registered trademark.

A trademark represents your business, your reputation, and the good will you have established with clients and consumers. Moreover, in today’s highly commoditized marketplace, frequently your trademark is the only differentiation between your goods and services and that of a competitor. In summary, your brand is valuable and it is worth taking the time and effort to protect it.

Profile: Tim Shen is a registered patent attorney with over 20 years of experience in technology and intellectual property law (patent, trademark, copyright, and trade secret). Tim can be reached at 281-558-0900; email tim@timshen.com; 14125 Memorial Dr., Suite 106, Houston, Texas 77079.

This article provides general educational information only and is not a substitute for legal advice.