TRADEMARKS AND TRADEMARK PROTECTION FOR BUSINESSES
If you own a business, it is likely you have one or more trademarks. The United States Patent and Trademark Office defines a trademark as being “a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others.” There is a parallel mark for services, called a service mark, but here I am calling both trademarks and service marks “trademarks.”) In short, a trademark is any name or logo you use to sell your goods or services. Given this definition, your business name, the name of products, and the names of processes and procedures might all be trademarks.
These trademarks are a valuable asset to your business, and they need to be protected. While there are common law protections for trademarks, the best way to protect your mark is to register it. Registration occurs in two ways. If you are selling your products or services within a single state, then you should register the mark with the Secretary of State for that state. However, interstate commerce is becoming the standard, and if you are selling your products or services to people in more than one state using the mark you want registered, you should register the mark with the United States Patent and Trademark Office (PTO).
If you register your trademark with the PTO, it will examine your mark to ensure that there is no “likelihood of confusion” with another trademark. This analysis looks at marks the same or similar to yours in the same channels of commerce. For example, if someone sells eyeglasses under a registered trademark, the PTO is unlikely to permit you to register a similar mark for sunglasses. If they find such likelihood of confusion, they will ask you to provide evidence showing why your mark is unlikely to be confused with another mark. This is often an arduous process, and we therefore recommend you have a trademark search done on your mark to ensure that no other person or company is using your mark or a similar mark. (In fact, we recommend that a trademark search be done on your marks to ensure you are not infringing on any other person’s trademark.)
If your registration is successful, then between the fifth and sixth year of registration you will have to file an affidavit with the PTO stating that you continue to use the mark. Between the ninth and tenth year of registration, you will have to file another affidavit stating that you continue to use the mark as well as a renewal application with the PTO. After this, a renewal application and affidavit of use will need to be filed every ten years if you want to keep the mark registered.
Trademarks are a valuable asset to your business. As such, protecting them is important, and the best way to protect your trademarks is to register your marks. For questions about trademark protection or enforcement, please call Boris Parker at (612) 355-2201 for a free telephone consultation.
