by Intellectual Property Attorney Bill Honaker, the IP Guy
Trademarks identify goods or services coming from a single source and can include business or product names, logos or slogans. Some examples of trademarks are the name Nike, the Coca-Cola bottle shape and the sound of the light saber from “Star Wars.”
In the United States, common law trademark protection is limited to the geographic area in which the trademark is used. For example, if you sell a product in Michigan only, the trademark rights to that product name exist only in Michigan. If you want to use that trademark in interstate commerce, you’ll want to register it federally as well.
While registering federally is not required, it gives you, the trademark owner, additional rights not available under common law. After registration, your rights extend throughout the U.S. and the trademark can become incontestable, which provides valuable presumptions in litigation. You also can use the “®” symbol, which shows the item is registered with the United States Patent and Trademark Office (USPTO).
Before you choose a trademark, you should search the USPTO database, also called the Trademark Electric Search System (TESS), to be sure that it is available in the U.S. After that, a more comprehensive search should be done to be sure there are no common law trademark uses. This can be difficult to do since no registration is required to establish common law rights to a trademark. Experienced trademark counsel can conduct these investigations to give you the confidence you need to invest in your trademark. If you are going to use your trademark internationally, a search should be done in those countries, too.
You must be careful when choosing a trademark as you don’t want to be sued for infringement. Don’t invest resources in marketing only to have to change the name and pay damages for infringement.
Intellectual property is one of your most valuable assets, so take steps early to invest in and protect it. If you don’t, there can be significant consequences.
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.