Do you have a trademark?

Trademark Protection

By Jack Gibney

A common mistake among business owners is failing to protect the assets of their business. There are physical, tangible assets, and then there are the more abstract, but just as important, intangible assets. One of the most frequently overlooked intangible assets is the trademark. There are trademarks for physical items, and service marks for service companies. Oftentimes, a business will use both types of marks without realizing their importance to the overall business plan or marketing strategy.

Most business clients that I represent have a variety of different marks that they may wish to protect. Additionally, many business owners unintentionally overlook the value of trademarks or service marks, and their importance. Trademarks are typically used for marketing purposes, and are used to associate a particular product with a consumer. Iconic examples are McDonald’s, Coca-Cola, Apple, and Windows, to name just a few. These trademarks are protected to prevent competitors from piggybacking on their efforts in order to sell their product. If you engage in any type of marketing plan, you want to be sure that your competitor will not be able to use your marketing efforts to their advantage.

There are many issues related to trademarks, but trademarks are typically used to build brand recognition. If your business is to build a brand, and most businesses want to do that, then you need to at least evaluate whether or not you need trademark protection for certain items. The trademark process itself is a relatively simple one in terms of the process of protection, but the first and foremost concern is whether or not the mark that you want to use is currently in use, or is so similar to an existing mark that the consumer would be confused. Your mark may not be identical to an existing mark, but if the examiner at the Trademark Office deems it “confusing,” the mark will be rejected.

There may be two marks that are currently in use, but if they are not promoting the same product or service, they are not regarded as confusing. Two examples of this are Delta for faucets or Delta for the airline, and Trident for gum or Trident for the submarine. A third example is the trademark Trump. Donald Trump owns the word Trump that he uses for gambling services, but there is another entity that uses the word Trump for a mobile barbecue. Because the marks are directed to different groups of consumers, no confusion is likely, and the marks were both approved.

Trademarks can be a single word, a phrase, a word with artwork, a design or logo, a jingle (the NFL owns the trademark for that familiar Monday Night Football introduction), or a smell. The evaluation of whether or not a mark is deemed viable is performed through a trademark search. The vast majority of searches are currently done online, and the Trademark Office has a database you can access easily and quickly for that purpose. A search can be done literally within hours.

Once you have decided that the mark is not currently in use and not so similar to any existing marks, the Trademark Office requires that you file the mark and show how the mark is to be used. The use of the mark should be specific to a product and cannot simply be used in advertising materials. In other words, it needs to be displayed on the can of Coke or the Windows box. Additionally, another consideration in receiving a trademark is to avoid the merely descriptive or generic. As a business owner, you are attempting to create something unique; a simple, generic mark runs counter to that idea.

It is not uncommon for a business to own multiple trademarks in order to protect multiple brands or services. A trademark is theoretically valid for the rest of time, with appropriate renewals of the mark being filed. The process to register a mark usually takes between nine and twelve months.

Once a mark is approved, the owner of the mark can then require competitors who want to use the mark, or a similar-looking mark, to cease all activity related to the mark. Unlike other types of intellectual property, a mark can be in use for many years and never be registered. If you are using a mark and fail to register it, and someone decides to register the same or similar mark after you have been using it, it will most likely restrict your ability to expand the use of the mark beyond a very limited geographic area.

The Trademark Office uses its own jargon, and it is important to obtain appropriate legal advice to help in deciphering the process. It is always advisable, when considering a trademark, to get an evaluation by an experienced trademark attorney, who may suggest changes to the mark. This will prevent wasted spending on brochures or advertising material if you find out that the mark cannot be used.

L. Jack Gibney is a native to Jacksonville and attended local school.  He accepted an appointment to United States Merchant Marine Academy and graduated from that college in 1979 with a B.S. in Engineering.  After graduating from the Academy he worked as an engineer and then returned to law school.  He graduated from FSU law school in 1984. He has been a Florida Bar Member since 1984, a Georgia Bar since 1985 and a Patent Bar since 2001.  Jack has been a sole practitioner since 1988 and currently concentrates his practice in the areas of intellectual property (primarily patents and trademarks) and private adoptions.


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