WHEREFORE THOU ART #29
TRADEMARK SKIDMARKS

So, you’re starting a business and you’ve got a zippy name for it, something that conveys the gestalt of your enterprise.

What do you do now?

Welcome to the wacky world of trademark law. Trademarks serve to label goods, services, and those who provide them (strictly speaking, trademarks apply to goods and servicemarks apply to services, but they are functionally the same thing, and I’m using the term “trademarks” in this article to discuss both). Trademarks are source identifiers. Trademarks can be names, phrases, logos, even colors.

Trademark law is a beguiling combination of federal, state and common laws, brimming with continuums, gray areas, balancing tests, and the like. But here are some rules of thumb to help you get through the morass and get into business.

The first thing you should be concerned about is whether your new zippy business name is going to violate the rights of somebody else’s trademark rights. One of the most dispiriting parts of my job is having to inform someone that their trademark is invalid. Often times, this means that signs, stationery, invoices, websites, and advertisements all have to be changed, and that all of the investment someone has put into establishing their business name and goodwill goes down the dumper. Screwing up with trademarks can be devastatingly expensive.

Before launching your business, then, it is mandatory that you check out the landscape to see if someone else is using the trademark you want to use. The simplest and most effective thing you can do is to Google the tradename. If someone is doing business with your tradename, Google will probably tell you. Another place to look is the federal Patent and Trademark Office database online, which you can find at www.uspto.gov. If someone has gone to the trouble and expense of registering their trademark with the PTO, you can safely assume they are quite serious about their trademark.

These two things generally get you about 98% of the way there. If you are planning a substantial investment in your mark, that last 2% becomes critical, and I’d recommend finding a trademark lawyer and asking him he have a thorough trademark search done by a professional search service. These services comb databases and directories nationwide (and worldwide if you want them to) and also are good at spotting sound-alikes and alternative spellings for trademarks that your Google search might miss.

How do you analyze your search? How close is too close, when is using a mark somebody else is using O.K.?

This is the fun part. Or the infuriating part, depending on your point of view. Just because somebody else is using a particular trademark somewhere for something doesn’t necessarily mean you can’t use the mark here for something else. It does mean, though, that you need to investigate things a little bit. There are no hard and fast rules in analyzing trademark rights. Almost everything is a matter of degree. Again, if you are geared up for a big, expensive roll out of your trade name, get a trademark lawyer to help you.

The central purpose of trademark law is to guard against confusion. If one trademark creates a likelihood of confusion vis-à-vis another trademark, trademark law steps in. This serves trademark owners, by promoting order in the business world, and it also serves consumers, by making sure people get what they pay for.

The more random and distinctive the trademark, the greater the protection the trademark will receive. This one reason why drug companies, for example, come up with totally fanciful and unique words for their products. Made-up trademarks like Viagara or Ambien receive the strongest protections that trademark laws provide. The more common the trademark, the less protection. That’s why in New York City you see dozens of “Ray’s Pizza” shops, all owned and operated by different folks (I’ve been told the “real” Ray’s is the one at 6th and 21st, and I’m sure this is a matter of some debate. I will say, however, that their pizza is sublime.). The name “Ray’s Pizza” simply lacks the distinctiveness to command much protection.

Timing is an important factor in trademark protection. All other things being equal, the law favors the first user of a trademark. There was once a guy on the Connecticut shore who ran a lobster shack he called “The Red Lobster.” He opened the joint in the 1940’s. In the 1960’s he noticed all these “Red Lobster” restaurants popping up in the suburbs near his shack. He got a lawyer, and as we say in the legal biz,”Ka-ching!”

Geography is important, too. Absent a federal or state trademark registration, trademark protection only extends to the geographical area in which one actually uses the trademark.

Registering your trademark isn’t mandatory, but if you’re in for the long haul and if you want enhanced protection with teeth for your trademark, and especially if you anticipate that you’re going to be doing business on a nationwide basis, it’s a real good idea. Trademarks can be registered at both the state and federal level. Most states (including Massachusetts, New York and Connecticut) have trademark registries where you can secure statewide protection for under $100.00. State trademarks are generally easy and quick to get, and you can probably do the filing without an attorney. A federal trademark provides nationwide protection, costs over $300, and is considerably more tricky. The PTO is fairly restrictive and watchful over what it allows to be registered, and while I have clients who have registered their own trademarks with the PTO, I’d highly recommend hiring an attorney to do it for you. Expect the registration process to take about a year.

You won’t be able to register a trademark until you can prove you are actually using the mark in commerce. I get a lot of calls from people who think up a tradename and are afraid to use it before they register the name. That’s now how it works. The states and the feds won’t register a mark prospectively; you have to use the mark first, then register it.

Confused? Good, that probably means you’ve been paying attention! It’s a confusing area of law, but it generally makes sense, and it works, at least most of the time.

© 2002 Paul C. Rapp
This article originally appeared in The Artful Mind, and is intended to provide the reader with an awareness of copyright law and not legal advice.