When a new business venture is
undertaken, so many important
tasks need to be completed, which could potentially push trademarking the
new company moniker to the side.
Joshua Tropper, partner with Gambrell &
Stolz LLP Attorneys at Law in Atlanta,
urges business owners not to hesitate. For
many legal reasons, he says, a new business should apply for registration of its
name as soon as it’s selected.
Smart Business spoke with Tropper
about why a new business should go about
trademarking its name and what steps it
should take to do so.
Should a new business selecting a name
trademark that name immediately?
A new business should apply for registration of its name as soon as the name is
selected, unless it doesn’t intend to use the
name in its marketing. Many private investment funds and holding companies, for
instance, never use their corporate names
as trademarks, and companies often have
subsidiaries whose names are never used
as trademarks. A company that doesn’t register its trademark will still have legally
protected rights in its trademark, but those
rights will generally be limited to the specific geographic area in which it actually
uses the mark. Federal registration, on the
other hand, has the effect of nationwide
use of a trademark retroactive to the date
the application was filed. Federal registration also creates a statutory presumption
of ownership and validity of the mark, and
that presumption normally becomes incontestable five years after registration.
The mere act of applying for federal registration can have the useful effect of alerting others not to choose confusingly similar trademarks for their own businesses,
which can save a lot of money and aggravation for everyone involved. The flip side
of the deterrent effect is that, if you do a
trademark search as part of the process of
applying for federal registration as soon as
you select a name, you’re more likely to
discover that someone else out there is
already using the name you chose. If that
happens, you know that you should probably pick a different name before you invest
too much in promoting a name that’s likely
to get you into trouble.
How does a company go about pursuing a
trademark?
The application form, along with a lot of
helpful information, is available online at
www.uspto.gov/teas/eTEASpageA.htm. It’s
not necessary to have a lawyer, although
experience with the process and appreciation for some of the peculiar subtleties of
trademark law can make a big difference.
The initial filing fee is between $275 and
$375, depending mostly on how routine the
application is. If everything can be put into
place electronically, it makes it a lot easier
for the Trademark Office to examine the
application, and that reduces the cost.
If an application is filed before the applicant has started actually using the trademark, there will have to be an extra step
later on when the applicant provides proof
that it has started using the mark, and
there’s an additional $100 filing fee.
Five or six months after the application is
filed, an examiner in the Trademark Office
reviews the application and notifies the
applicant of any problems or questions.
After any issues are resolved, the application is published and there’s a 30-day
opportunity for anyone else in the world to
object. If there’s no objection, a formal certificate of registration will be issued. If
things go smoothly, the whole process
takes about a year.
How does a trademark protect a company?
The purpose of trademark law is to protect the public by helping to ensure that
any goods or services that are marketed
under a trademark actually come from the
owner of that mark or from someone
authorized by the owner. Everything in
trademark law ultimately boils down to a
‘likelihood of confusion.’ It’s perfectly legal
to use exactly the same trademark to sell
accounting services in Macon that someone else is using to sell pizza in Walla Walla
because confusion is unlikely. However,
the more similar the goods or services are,
the more different the trademarks have to
be to prevent confusion — and vice versa.
In addition to the deterrent effect of a
trademark search, once a trademark is registered, the Trademark Office will not register confusingly similar trademarks for
other applicants. Also, Customs & Border
Protection can block importation of
infringing goods and the federal courts can
order others to stop selling infringing
goods or services.
Are there any other things a new company
should trademark besides its name?
Anything that can serve to identify the
source of goods or services can be registered. Slogans and logo designs are the
most common examples of trademarks
that aren’t just business names, but it’s also
possible to register colors, sounds and
even scents — if the examiner can be persuaded that they really do indicate the
source of the products or services.
What legal action can a company take if
someone violates its trademark?
The standard legal action is a suit in federal court, which can order the infringing
party to stop making or selling the offensive goods or services, reimburse for any
lost profits or disgorge its own profits,
reimburse the trademark owner for its
attorneys’ fees and even to destroy any
inventory of infringing products. International enforcement is also possible.
JOSHUA TROPPER is a partner with Gambrell & Stolz LLP
Attorneys at Law in Atlanta. Reach him at (404) 223-2210 or
[email protected].