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Are Your Familiar with Trademark Law?

By: Susan Dunn

Susan Dunn, The EQ Coach, coaches individuals and executives in emotional intelligence, and offers workshops, presentations, trainings, Internet courses and ebooks.  She is a regular presenter for the Royal Caribbean and Costa cruiselines.  Visit her on the web at www.susandunn.cc and mailto:sdunn@susandunn.cc for FREE ezine.

You’ve been using your company name for a while now and, as things get more crowded, you’re beginning to wonder if anyone else uses it, what the law is, and what you should do, if anything to protect it.

Did you know that FIRST USE of a trademark will grant you common law ownership of that trademark in the particular market in which you currently offer your goods or services, but FEDERAL REGISTRATION grants you the exclusive right to a trademark in the relevant market nationwide.  You can go here for more general information on trademarks: hwww.nameprotect.com/tm_protection_reginfo.html

So is it really “yours”?  Start with a free trademark search to see if it’s already taken:  www.nameprotect.com/cgi-bin/FREESearch/search.cgi.
 
If not, you can proceed here: http://www.uspto.gov/teas/index.html to register your name on the US Patent and Trademark Office's electronic system.

Once you have your name trademarked, NameProtect will monitor it for you monthly, tell you about competitors, guard against threats to your brand, and alert you if someone is trade marking your name.  Go here: www.nameprotect.com/tmmonitoring.htm.

Perhaps you’re wondering what the benefits of federal registration are?  Here are some:
  • Provides nationwide notice of exclusive ownership which prevents others from acquiring common low rights through innocent adoption and use
  • Creates legal presumption in court of your right to exclusive use
  • Opportunity to make it unchallengeable by keeping it in use for 5 years from date of registration
You can go here to learn more: www.nameprotect.com/reference.html#FedRegBenefits.

What are the qualifications for federal registration?  It has to be distinctive enough to identify the business as the only source of goods and services, and ordinary names (descriptive, laudatory, geographical, personal and generic) don’t usually qualify.

Strong trademarks include:
  • Fanciful. Made-up words like "Kodak".
  • Arbitrary. Real words used in a different way, such as Apple computers.
  • Suggestive. Real words that suggest, but don't actually describe qualities, like Greyhound bus.
Weak trademarks include:
  • Descriptive Trademarks, like "Donuts," or "Low-Cost Builders"
  • Personal Names, like Smith's Automotive.
    • Unless they develop 'secondary meaning,' like Ben & Jerry's ice cream.
  • Generic Words, like "aspirin".
Source: www.nameprotect.com/reference.html#FedRegBenefits

Where else can you get information?  The International Trademark Association (INTA), www.inta.org .  Check out their Checklist for Trademarks + Trademark Proper Use Kit.  Join their TM Topics Email List to post questions, get answers, and exchange ideas with members and non-members, “from top level corporations, associations and legal firms”.  Go here: www.inta.org/tmcklst1.htm .

And what about your URL?  Global Domain Name Monitoring can help you protect your domain name. (www.nameprotect.com/freemon.html )  They provide monthly monitoring of new, potentially infringing domain name registrations from the general Top Level extensions - .com, .net, .org, and more - and country-code domain name extensions.

Your name and trademark are an important part of branding.  Protect yourself.  Of course for legal advice, contact a trademark or intellectual property lawyer.

© copyright, Susan Dunn, 2002

Other Articles by Susan Dunn

The author assumes full responsibility for the contents of this article and retains all of its property rights. MarcommWise publishes it here with the permission of the author. MarcomWise assumes no responsibility for the article's contents.

 

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