by Intellectual Property Attorney Bill Honaker, the IP Guy
The most important step to strong trademark protection
Your trademark is likely your most valuable Intellectual Property Asset. If you chose a strong trademark, it will grow in value as your business reputation grows. A trademark is actually a form of protection for your business reputation. It’s what consumers use to identify you. It is analogous to your own good name.
I’ve been involved in the sale of several businesses. In each of these, the purchasers wanted the trademark. It symbolized the goodwill of the business. It alone can increase the multiples that a buyer is willing to pay.
The important lesson is, you must choose wisely. It reminds me of the scene in “Indiana Jones and the Last Crusade,” where the Grail Knight says, “You must choose, but choose wisely.”
How to Choose Wisely
The ultimate decision on the best trademark should be done with the advice of trademark counsel, someone who regularly practices trademark law. But, there are some steps you do on your own.
Choose a strong mark
You want to choose a trademark that is strong. Trademark strength is determined on a scale of weak to strong. The chart below shows examples of trademarks on the scale. It is important to note that weak marks can become strong over time through use, but it is best to start with a strong mark.
A strong mark that identifies and distinguishes your business is more valuable, and they have a self-policing aspect. It is hard for others to argue they selected their mark innocently when yours is not descriptive or suggestive.
- Generic marks are common words for common things and cannot be trademarked.
- Descriptive marks describe a function, feature of the product or service.
- Suggestive marks suggest a function, feature of the product or service.
- Arbitrary marks are common words used in an uncommon way.
- Coined marks are made up of words that have no meaning.
Do a preliminary search
Make a list of your favorite choices. Then search them on a search engine such as Google to see if anyone is using the marks. You are looking for others that are using a similar mark for similar goods and services.
The main question is whether your use of your mark will be considered confusing to consumers. Will consumers believe that you are somehow associated with the existing trademark.
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
You don’t want to choose a mark that is confusingly similar to another trademark. Trademark infringement requires proof that consumers are likely to be confused. Likelihood of confusion is evaluated using a seven-factor test:
- the strength of the trademark allegedly infringed,
- the similarity of the parties’ marks,
- the similarity of the parties’ goods,
- the similarity of the parties’ sales channels, distribution, and customers,
- the similarity of advertising media,
- defendant’s intent, and
- actual confusion.
There are so many nuances, that choosing a mark on your own is risky. You should also search the United States Patent and Trademark Office. The USPTO maintains a record of all trademarks that have been filed, and their status. It is called TESS, the Trademark Electronic Search System.
You can search your mark in connection with the goods or services on that site. I have an instruction sheet to help you navigate that search site.
Get legal advice
Once you have culled your list to the best possible marks, contact a trademark attorney for a complete search. Trademark counsel has access to sophisticated searching software that will provide detailed search results.
Trademark counsel will conduct the search and render an opinion on the strength, availability for use and likelihood of getting registration.
Federal trademark registration
Once you have your trademark, you should file a trademark application. Federal registration requires that you use your trademark in interstate commerce. Generally, this means that you will use your trademarks in other states. Your attorney will advise you on what use is required.
There are numerous advantages to federal registration:
- Your trademark is presumed to be valid, which gives you an important advantage in court.
- It is considered valid throughout the United States, instead of being limited to the geographic area of use under common law.
- After five years your mark can become incontestable. Basically, incontestability shields the mark against challenges to the validity of the mark based upon descriptiveness.
- A federal registration allows the use of ® to identify the mark as a registered mark. Most people recognize the ® as a symbol of your ownership.
- The federal courts have jurisdiction over disputes involving federal registered trademarks.
- Your registration protects itself. The mark is easy to find when others are considering choosing a mark. It is publicly shown on the USPTO website.
If you are not going to use your trademark in interstate commerce, then you should register it in your state.
Your trademark is a valuable asset. Take care in choosing wisely. Although you can do some of the work on your own, you shouldn’t do it all. The return on investment in having legal assistance will be enormous. The potential loss of your trademark will be devastating in comparison.
About the Author:
Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.