“You ask, ‘What’s in a name?’ I answer, ‘Just about everything you do.’” – Morris Mandel
The name of your company is important. It is the proper noun that identifies the company. It is the official name under which the company does business. The company has built its brand under that name. To protect the reputation or goodwill that you have built in the public under the company’s name you should consider seeking federal trademark registration. A federally registered mark affords the highest level of protection of the company’s intellectual property rights in the name. As discussed in this blog post, other levels of protection for a name are available, but they are not the same as getting a federally registered trademark.
What a trademark is.
A trademark is a name, word, phrase, symbol, design, or logo that identifies goods or services sold by your company. A company’s ownership of a particular name, word or phrase will be limited to the specific type of goods or services the business provides under that trademark. Apple Inc., for example, has a trademark for its use of that name for the class of goods and services related to consumer electronics, computer software, and that type of technology. A different company may be able to get a registered mark for that same name if the second company manufactures a distinct type of good or services such as draperies, for example, because there is little likelihood of confusion on the part of the consumer. When shopping for draperies made by “Apple” it is not likely that a customer would be thinking that the curtains manufactured by such a company were actually made by the same Apple that makes electronic goods like the iPhone. The USPTO may, therefore, grant such registration of the word Apple to the drapery company for the sale of its curtains. While federal trademark registration is limited to a type or class of goods, it is not limited geographically within the United States. If a company has a federally registered mark it can exclude others from using that mark on a national level (within that industry).
The process to obtain protection of your trademark under federal law begins with preparing and filing an application with the United States Patent and Trademark Office (USPTO). A trademark may include certain art used for the name of the company, goods, or services, including a particular font, color, symbol or design associated with the trademark. Once filed with the USPTO, prosecution of a trademark application can take several months and will involve negotiations with a trademark examiner. After resolving any issues with the trademark examiner through the office action process, there is a 30-day statutory protest period that begins after publication of the mark in The Official Gazette, a USPTO publication. After trademark registration is issued, a company can sue others for trademark infringement in federal court. The trademark owner may also use the ® symbol to protect the mark. It should be noted that before a company obtains federal trademark registration, it is permitted to use the ™ symbol for goods or the SM symbol for services when using the mark.
What a trademark is not.
When you first started your business and the company started to offer goods or services to customers, the use of your company’s name or the word used for those goods or services established the start date and began your ownership rights in that name. These rights of ownership are known as common law rights. These common law rights protect the use of the mark at the state level. In addition to common law rights, some states also have trademark registration at the state or local level. Again, this is in contrast to obtaining federal trademark registration with the USPTO discussed above. As with common law rights, state trademark registration provides trademark protection only within that state.
Confusion also arises with the assumption that some type of name or trademark protection is afforded by the act of filing documents with a state when you formed the company. At the time of corporate formation, the proper, full, legal name of your company was set forth on the articles of incorporation you filed with the state where you registered your company. The state or commonwealth then checked to be certain that no other business with that exact name was registered to do business there. If so, registration would have been denied and you would have had to change your company’s legal name. There was no concern at the state level when you formed your company to eliminate any confusion for the public that may be created by having companies with similar names regardless of whether such companies provided goods or services in the same industry. The filing of documents with the state to form your company did not constitute getting a trademark registered for that name within the state. Similarly, filing a fictitious or “doing business as” name registration at the state or local level does not grant federal trademark registration.
Like the misconceptions discussed above, there are other misunderstandings about when and how to get a trademark. Registering a domain name (your internet address) with an accredited domain name registrar, for example, is not the same as getting a trademark registered with the USPTO. Sometimes domain names can be trademarked or a trademark may, in fact, be part of your internet address, but the act of registering your company’s domain name does not constitute the same thing as getting a registered trademark.
So what’s in a name? I answer, “A tremendous amount of value.” It is worth protecting the goodwill or reputation that the company has established in the name associated with the goods or services it provides and which your customers have come to value. Hopefully this blog post brings clarity to the importance of trademark protection and the complexity of some of the issues related to trademarks.
About the Author: Kimi Murakami is counsel with PilieroMazza and focuses her practice on corporate transactions with an emphasis on mergers and acquisitions of government contractors. She also has experience advising on intellectual property matters including trademarks and trade secrets. She can be reached at email@example.com.