Trademarks are an essential part of any business. They represent your goodwill, your reputation, and they’re how people can tell the difference between the products and services that your business offers and what other businesses offer. Now you need to work trademarks into your business plan.
First, we’ll learn what trademark is. Second, we’ll learn how to select or choose or create your own trademark. Third, we’ll learn what resources are available to you if you need help during the application process. By the end, we’ll, understand how valuable an asset a trademark is and that it’s going to help your business grow over time.
First things first: what is a trademark? The legal definition of a trademark is any word, slogan, symbol, design, or combination of these things, that identifies the source of your goods and services and distinguishes them from the goods and services of another party. But the easiest way to think about it is this: a trademark is a brand for goods and services.
Let’s look at a couple of examples. You know Coca-Cola and Pepsi, and when you see each mark on a can or a bottle, you immediately know the source of the beverage. You also know that it’s not the competitor’s beverage; the trademar distinguishes them. That way, you don’t drink a Coke when you want a Pepsi and vice versa.
Now that you know what a trademark is, you need to ask, “What’s your trademark?” Do you have one already? One that you’d like to use? Or no idea at all and you’re open to any good ideas that come along?
Before you apply for federal registration, it’s important to understand that not everything that you want to register as a trademark can be registered. The U.S. trademark office examines every application for compliance with federal laws and rules and if the application doesn’t comply, the office will send a refusal letter known as an “Office Action.” In some cases, it’s possible to overcome the refusal, but not always.
The most common reason for refusal, and the most common pitfall, is what is known as “likelihood of confusion.” That’s a likelihood of confusion between the mark in your application and a mark that is federally registered to another party. Typically, the refusal arises when two key elements are present. One, the marks are similar. And two, the goods and services of the parties are related. That is, the marks look alike, sound alike, have similar meanings, or create similar commercial impressions.
To help you avoid a likelihood of confusion, you should know what resources you have and do what is known as a “trademark clearance search.” That involves searching in a few places for use of marks that are similar to yours. And remember, you are typically looking for use with goods and services that are related to yours.
This brings us to the third point: what resources are there to help you? The first place to look is in the trademark office database of federally registered and applied-for marks. The database is available on USPTO.GOV and you can search it for free using the Trademark Electronic Search System, which is known as TESS. Now, that’s the same database that the trademark examining attorneys at the trademark office use when they are examining an application, searching for conflicting marks.
Because TESS only covers federally-registered marks, and because there are unregistered marks, it’s not the only place you’re going to need to search. Other resources you should check include state trademark databases and also business name databases. And you’re also going to want to look on the Internet. When you’re searching on the Internet, you want to do a search for websites and articles that have similar Trademarks that are related to your goods and services.
Now, that’s a lot of searching, but you should do it to avoid inadvertently stepping on someone else’s trademark rights. If you do, they might engage you in a legal battle, claiming you have infringed their trademark. And if you lose, you might have to destroy your inventory and all of your marketing materials. You might even be forced to pay monetary damages. As a small business, I’m guessing that all of those things are not included in your budget, so doing a pre-application clearance search is very important.
There are trademark lawyers and companies not affiliated with the trademark office that you can hire to do your search for you. A trademark lawyer can also evaluate the search results and give you a legal opinion letting you know if your mark should be available for you to use and to register.
Now that you know more than most people about trademarks, make sure you use what you’ve learned and apply it to your own business.