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Trademark Selection and Protection: A Practical Guide

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By: Shahpar Shahpar

Successful businesses should protect their trademark rights.A trademark (or service mark) is typically one or more terms or symbols used to identify or brand a product or service.Businesses should be aware of and consider various aspects of trademark protection and some practice tips in selecting a trademark and applying for registration.Some of the issues relevant to trademark selection and protection include descriptiveness of a trademark, trade name versus trademark protection, availability of a trademark, and timing and budgeting for a trademark registration.

Although tempting, businesses should avoid selecting descriptive trademarks, such as trademarks descriptive of the offered goods or services or the geographic location of the business.Fabricated words can be some of the strongest trademarks (e.g., OREO(R) cookie).

Trademark protection should be considered in addition to trade name protection.Merely using a corporate name or dba (doing business as) may acquire common law trademark rights depending on the use, but does not automatically provide state or federal trademark protection.Businesses should not assume that trade name use or registration will provide trademark rights and protection.Each trade name should be evaluated for trademark value to determine whether state or federal trademark protection applies.

It is important for businesses to consider whether a trademark is available or if someone else already has rights to the trademark.Often, a quick search can avoid potential problems that may arise if another is already using the trademark, a registration already exists for the trademark, or other circumstances exist which may be obstacles to using or protecting the trademark.

Plan time for obtaining a federal trademark registration.It can take at least 9-12 months from the application date to get a federal trademark registration, assuming there are no issues that would extend the process or even prohibit registration.Many businesses presume that federal trademark registration is quick and easy like some state registration procedures.To the contrary, federal trademark application for registration procedures can be time consuming and complicated, so businesses should budget adequate time.

Further, businesses should budget costs for obtaining a federal trademark registration.The current U.S. Patent and Trademark Office fee for one class of goods or services for one trademark is $325 (excluding legal fees associated with preparing the application, which can significantly increase the fees).Examination of a federal application in the U.S. Patent and Trademark Office (which may or may not lead to registration) can add cost, especially if there are issues that may hinder registration.Businesses, therefore, should budget not only time, but also money for a federal trademark registration.

Businesses should consider these quick tips in selecting and protecting a trademark.An attorney experienced in trademark practice can work with a business to formulate a trademark strategy that works in conjunction with that particular business's goals.Successful businesses take the time and effort to protect all their assets including their trademark and other intellectual property rights.

Copyright (c) 2003 Shahpar Shahpar