[To comment: Larry at LarryLitwin dot com]
Strategic Rhonda Abrams via USA Today has written a terrific piece on Trademarks and service marks. Here is the link: http://usat.ly/1tIo3jO
If you prefer reading the column here, it is below. Full credit to Abrams and USA Today.
You’ve got a great idea for a new company or product. You’re getting ready to launch. You’ve even come up with a catchy name that everyone says is terrific. You’re ready to roll.
Whoa! Before you print up a bunch of business cards or make signs to hang outside your new small business, be sure to check whether you can protect that name you’ve fallen in love with. You need to see if you can get it trademarked — or if someone else has the rights to it already.
There are two primary kinds of trademarks:
— Trademark. A word, phrase, symbol, or design (or a combination of these) that identifies and distinguishes the maker of a product from makers of other, similar, products.
— Service mark. The same as a trademark, except that a service mark identifies and distinguishes the provider of a service rather than a product.
When your company acquires a trademark or service mark, no other company can legally use that name for competing products or services. Note the word “competing.” Two companies that operate in completely different business spheres can have the same or similar names.
That’s because trademark law is designed to prevent confusion in the marketplace. So trademarks are tied to a particular class of “goods and services” (GS). If you make video games with a certain brand name and also want to make T-shirts with that same name, you’ll want to get trademarks for both those two classes.
You may be surprised to learn you can’t trademark the simplest names. The US Patent and Trademark Office, or USPTO, requires a mark to be “distinctive” and not simply “descriptive.” For instance, you can’t get a trademark for a health resort called Spa, because it’s merely descriptive.
That can make things quite complicated — especially if you’re creating a whole new type of product. Years ago, for example, I had a client who had invented a new kind of sporting board, which he gave the brand name “Mountain Board.” USPTO required him to show that wasn’t just descriptive, and we came up with the term “all terrain board” to describe the class of product. He got the trademark.
When deciding on a name for your company, product, or service, first check to see if anyone else has a trademark for that name (or something very similar) in a related category of goods or services.
Here’s how to do a basic trademark search:
— Go to the USPTO website. Click on “Search for Trademarks.”
— In addition to searching for the specific name you’re considering, search for any similar names — whether in spelling, sound, or meaning.
— Check to see whether a mark is “alive” or “dead.” Dead marks mean they’re likely to be available.
— Click on any potentially competing trademarks and to see which categories or classes of products/services the mark is being used for. You can learn about those classes at the USPTO site or more easily from the legal services company,LegalZoom.
Be careful, however, if you choose a name that’s too close to a big company. Because here’s the truth about conflicting — or nearly conflicting — trademarks: the company willing to spend the most on lawsuits wins.
Take heart, however, there’s one way to leverage a trademark battle with a huge company — through the media. For example, in August, Saks Fifth Avenue sent a “cease and desist” letter to Snaks 5th Avenchew. The tiny New Jersey-based maker of gourmet treats for dogs and horses received far more press coverage than they could have afforded to pay for.
Now, I’m not advising you to choose a name that’s likely to infringe, but you may encounter such opposition for innocent actions.
Mind you, there’s a very good reason big companies go after little guys. It’s something you, too, need to know about protecting your trademark. If you don’t actively protect your mark, the courts can deem it in the “public domain.” That’s what happened to many previous trademarked names such as “zipper” or “thermos.”
Finally, if you’re investing a lot in your brand or company names, I’d suggest contacting a professional trademark search firm or lawyer. Some names may already be in use in interstate commerce but not yet officially registered.
Your name is a valuable company asset — protect it!
Rhonda Abrams is president of The Planning Shop and publisher of books for entrepreneurs. Her most recent book is Entrepreneurship: A Real-World Approach. Twitter: @RhondaAbrams. Facebook: facebook.com/RhondaAbramsSmallBusiness.
[To comment: Larry at LarryLitwin dot com]
