Zarley Contributes Trademark Section to BIZ Book
"How Business Gets Done: Words of Wisdom by Central Iowa Experts"

Establishing and Protecting a Trademark

Many new business owners, when selecting a name for their business or a product, give little consideration to the name’s trademark value. Typically they select a name that is descriptive of their goods, services, or geographic area. They might do a quick search on the Internet to see if others are using the name, and if not, they register the name with the state or county authorities and think that they are safe to proceed. Then, after they have invested time and money generating goodwill and recognition in the mark, along comes another company who has a federal registration for the same name, and the business owner is forced to change the business’ name, sometimes at substantial cost. All of this could be avoided by following a few simple guidelines: select a name that has strong trademark value, search to determine if there are any potential problems, and determine whether a federal registration is necessary.

Selecting a Trademark

A trademark is a word, a symbol, or a combination of both that identifies an individual or company as the source of a particular good or service. As an example, when you see the Nike swoosh you immediately identify Nike as the manufacturer of the shoe or piece of clothing.

Not all words or symbols are available for trademarks. As an example, generic terms like cake can not be protected as a trademark. Also, descriptive terms generally are not available as trademarks. For example, chocolate cake would be descriptive of the characteristics and qualities of the cake. Descriptive terms can be recognized as trademarks if, through extensive use and advertising, consumers come to identify descriptive terms with a particular source. But generally, you are better off selecting other terms.

Suggestive terms can be trademarked. For example, if your mark is Smokey Chocolate Cake it is merely suggestive of the characteristics, as there is no such thing as a cake that smokes. Generally, the way to tell if a term is suggestive is if it requires a bit of imagination to picture.

Finally, arbitrary terms can be trademarked. For example, the terms Betty Crocker and Duncan Hines have nothing to do with the characteristics of chocolate cake, but through extensive use and advertising the public has come to associate these terms as identifying the source of a box of cake mix.

Thus, when selecting a word or symbol for a business or product, it is better to select something that is arbitrary, or at least suggestive.

Searching for Prior Use of a Trademark

In addition to selecting a name that has strong trademark value, you want to make sure that no one else is using the same mark, or one that would be confusingly similar. While there are many factors that determine whether your name would be confusingly similar, generally you can compare the similarity of the overall appearance of the mark and the relatedness of the goods or services. If your mark is identical to another, but the goods are completely different, you most likely are OK. Likewise, if the goods are the same, but the marks are substantially different in appearance, pronunciation, and meaning, then you are likely OK.

To search a mark, you can go to the United States Trademark Office website at www.uspto.gov. You can also perform a Google or similar web search. When conducting these searches, you need to be careful with your query. If your query is too narrow you may be missing marks that could be a problem. So, generally, the broader your query the better.

While there is no guarantee, if you want greater certainty you should have an attorney perform a trademark search. In our office we have an associate who searches multiple databases using variations on the spelling and order of the mark. Once we receive the results we draft an opinion letter as to whether there are any potential problems with using the mark and/or registering the mark.

When You Should Register a Mark

One establishes a trademark by using the mark in commerce in connection with specific goods or services. This is referred to as a common law trademark. The limitation of a common law mark is that your protection is limited to your area of market penetration, which generally means where you sell and advertise your product or service. If your plan is to just do business in your local area, the need for a registration is small. You can register your trademark with the state and while this does not expand your protection, it does serve a notice function to others (when they conduct a search) that you are using the term as a trademark.

If you plan to expand your business regionally or nationally, registering your mark with the United States Trademark Office is recommended. The advantage of filing for a registration is that as of the date of filing you obtain a priority right to the mark throughout the United States, whether you have established market penetration or not.

While these guidelines can help you along your way and avoid many pitfalls, this is just a general summary of some of the more important issues related to trademark law. If you wish to learn more, or if you have further questions or concerns, we recommend contacting an attorney that specializes in this area of law.

Five Questions You Should Ask Yourself

1. Have I selected a mark that is arbitrary or suggestive as opposed to descriptive or generic?

2. Is anyone else using the same or similar mark?

3. If others are using the same or similar mark, are they using it for goods or services that are related to my own?

4. Should I have a professional trademark search done by an attorney?

5. Do I need to register the mark?

Additional Resources on Trademarks

Trademark Offices website (www.uspto.gov)

Overview of Trademark Law (www.cyber.law.harvard.edu)

Wikipedia (www.wikipedia.org/wiki/trademark)

Trademark Law (www.bitlaw.com/trademark)

Trademark Overview (www.ipwatchdog.com)

Trademark: Legal Care for Your Business & Product Name by Stephen Elias and Richard Stim

The Entrepreneur’s Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing by Jill Gilbert

Patent, Copyright & Trademark: An Intellectual Property Desk Reference by Richard Stim

Patents, Copyrights & Trademarks for Dummies by Henri J.A. Charmasson and John Buchaca

Essentials of Trademarks and Unfair Competition by Dana Shilling

If you are interested in learning more, please feel free to contact us with any questions. We can help you.

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