Many companies’ trademarks are
their face to the world. The process
of keeping a trademark secure starts at the very inception of the concept.
“A smart CEO starts the process with
development, evaluation and screening of
potential trademarks,” says Cami Dawson
Boyd, who is the head of the Trademark
and Copyright Practice of Munck Butrus
Carter, P.C. “The process continues with
maintenance and enforcement of trademarks and service marks — both in the
United States and around the world.”
What is the difference between a trademark,
a service mark and a trade name?
A trademark is any word, name, symbol
or combination of those things used in
commerce to identify and distinguish the
goods of one manufacturer or seller from
the goods manufactured or sold by another and to indicate the source of those
goods.
A service mark is any word, name, symbol or combination used in commerce to
identify and distinguish the services of one
provider from the services provided by
another and to indicate the source of those
services.
A trade name is the name by which a
business is commercially known.
How does a business know its trademark is
unique and enforceable?
A business owner should take the time
and invest the resources necessary to evaluate and screen a trademark before the
mark is adopted and used in commerce.
This process is known as trademark clearance. There are different types of trademark clearance screening available. The
scope and depth of the trademark clearance that may be necessary in a particular
situation will vary from case to case. At a
minimum, a prudent business owner needs
to ensure that the business can both adopt
and use the trademark in commerce and
that it has a reasonable possibility of securing a registration for the mark. Trademark
clearance screening can answer those
questions.
A good mark clearly distinguishes the
goods or services of the owner from those
of another. There is a sliding scale of trademark distinctiveness and marks can generally be categorized into the following categories: fanciful or arbitrary [the strongest],
suggestive, merely descriptive or generic
[the weakest].
How do you obtain a trademark?
The first step is to retain counsel to conduct a clearance investigation to confirm
that the trademark is available for adoption, use and registration. Then, the business must act to secure the registration of
the mark in the United States and elsewhere in the world.
In the United States, trademark registration is handled by the United States Patent
and Trademark Office (USPTO). An application can be made by mail or electronically. The process generally takes slightly
longer than a year.
Clearing and registering a trademark typically costs between $1,000 and $3,500 in
the United States, depending on the scope
of the application to register and whether a
trademark clearance investigation is performed. The USPTO charges a filing fee of $325 per class [of goods/services] in which
an application for registration is filed.
Costs for securing and registering a trademark elsewhere in the world vary widely.
In all cases, the costs for securing protection of a mark prior to or at the time that
use of the mark commences is a prudent
allocation of resources. The costs of securing trademark rights at the outset are far
less than the costs a business will incur in
developing and promoting a mark that conflicts with another. In the United States, a
trademark registration is currently good
for 10 years and can then be renewed as
needed. Other countries have similar registration terms.
What else must a company do to maintain its
trademark?
The prudent business owner adopts standards within the company for the manner
in which the trademark is used and aggressively polices the marketplace to ensure
the mark is not infringed or diluted.
Is incorporation and/or assumed name filing
enough to protect our trademark?
Absolutely not. This is one of the most
common mistakes made by new business
owners. The fact that a corporate name is
available through the relevant secretary of
state’s office or that your company has
made an assumed name filing does not
mean that you have established a trademark, that you are entitled to use your
business name as a trademark or that you
have done what you need to do to protect
your trademark. To establish and maintain
strong trademark rights, a company should
adopt and use a strong trademark that is
not identical or confusingly similar to the
marks of any other company, secure U.S.
and foreign trademark registration for the
mark, and actively police and protect its
trademark.
CAMI DAWSON BOYD is a shareholder and head of the
Trademark and Copyright Practice at the Dallas Law Firm of
Munck Butrus Carter, P.C. Reach her via e-mail at
[email protected].
