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PATENTS AND TRADEMARKS

Trademark Disputes Don't Just Happen to Giant Companies

Getting a trademark may seem like a hassle, but if you've been in business for a number of years, you might be well on your way already.
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A number of high-profile trademark cases recently involving search engine giant Google and lingerie retailer Victoria's Secret prove this: Your business name is critical to your success. It's how your customers identify you, and it's part of your brand. 

But whether or not you need a state or federal trademark to protect your business is a whole other ball of wax. Depending on the reach of your business and your aspirations for growth, you may be fine without one. But if you're doing business across state lines, and want to grow nationally, the chances are that you do. 

Trademarks are meant to do two things: to protect consumers from confusion about what and from whom they're buying and to protect companies from competitors who would seek to unfairly profiteer from associating with your brand.

Simply by operating your business, particularly by selling to customers across state lines, you're already developing common law rights to your business trademark, legal experts say.

"In the U.S. you can establish your rights by using a trademark or advertising with it," Paul Llewellyn, a partner and co-head of the trademark, copyright and false advertising group at Kaye Scholer, in New York, says. 

The failsafe way, however, is to go ahead and register for a federal mark. (A state trademark, as its name implies, gives you protections primarily in that locale.) Landing the federal marker isn't necessarily an expensive process. Typically it won't cost much more than a few hundred dollars for filing fees with the U.S. Patent and Trademark Office, unless you use an attorney, which will cost more. Still, there are a lot of moving parts to keep in mind.

1. Make it unique.

In order to be approved, your mark can't be so generic as to render it implausible--America's Best Company, for example, may not fly. On the other hand, there are plenty of examples where similar kinds of names do work. Think of American Airlines and International Business Machines. Both companies can trademark these names, although they are considered "merely descriptive." That's a legal term of art that suggests the mark, while only describing the goods and services of the business, has acquired some distinction, or secondary meaning, recognizable by consumers.

"Over time, because IBM developed a reputation and spent money on advertisements, people looked at this as identifying a single source," says Marsha Gentner, senior counsel and a trademark attorney at Dykema, a law firm in Washington, D.C.

2. Consider nonsense names.

Believe it or not, though, your best bet is likely to be with a name that's either made up or arbitrary. George Eastman made up Kodak as the trademark for his brand of camera and film products. And most people are acquainted with the legion of Internet-era examples, ranging from Google to Zumba. 

3. Make a commodity highly specific.  

Another class of trademarks that have a better chance of winning approval are so-called arbitrary marks. That's where a very generic-seeming word is applied to a highly specific product. Yes, Apple computers nailed this one. But so did Blackberry, for its handheld devices. And Dominoes, for pizza.

4. Just do the paperwork.

While the process of getting a federal trademark can be lengthy, on the order of a year or more according to some estimates, your trademark grant is retroactive to the time you first file. That's good news if you wind up in a trademark dispute in the intervening time. Legal experts say you can also file an "intent-to-use" trademark, which, as its name suggests, means you plan to use a trademark starting in a given period of time, even before you have one.

5. Don't violate another's trademark.

One last thing to keep in mind: your mark can't already be in use, so you need to conduct a thorough search of USPTO databases, as well as of state and federal common law uses. A trademark attorney can help with that, as can various third party search firms.

"A trademark is branding 101," says Rachel Stilwell, an intellectual property attorney in Calabasas, California. "You want the consumer to know which company provides the product or services they are purchasing, and you want to develop customer loyalty,  and the trademark serves that function."

Last updated: Aug 4, 2014

JEREMY QUITTNER | Staff Writer | Staff Writer, Inc. and Inc.com

Jeremy Quittner is a staff writer for Inc. magazine and Inc.com. He previously covered technology for American Banker and entrepreneurship for BusinessWeek.




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