How to Immunize Your Brand with Government Filings and Trademarks - dummies

How to Immunize Your Brand with Government Filings and Trademarks

By Bill Chiaravalle, Barbara Findlay Schenck

The extent to which you protect your brand name legally depends on the size of your business, the size of your market area, and the vision you hold for your business. If you think that someday your brand will span state or national borders, you should put every form of legal protection in place, the sooner the better.

The best time to protect your brand name is when you name your business.

The most common methods of name protection are

  • Filing your business name with local government offices

  • Establishing a trademark

Registering your name with local government offices

Filing your name with the right local government office is a necessary step.

Registering a business using the owners’ legal surnames

If your business name includes the legal surname of each owner along with a generic description of your business (for instance, Smith, Jones, and Peterson Insurance), follow these steps:

  1. Find out where the database of registered business names is maintained in your state or region.

    Contact the office of your county clerk or your secretary of state for help, or ask your attorney or accountant for instructions.

  2. Register your business name by completing a form and paying a fee.

    When you’re doing business under your legal name (such as John Johnson Plumbing), a name search isn’t necessary. But if you add a phrase such as “and Sons” or “and Associates” to your legal name (for example, John Johnson and Sons Plumbing), you need to register it as a fictitious or assumed name because the name suggests that other owners are also involved.

Registering a fictitious or assumed name

Fictitious names or assumed names require registration following these steps:

  1. Confirm that no competing business has staked claim to the name you want.

    Request a search of the assumed names database in all jurisdictions in which you want to register your name. Begin with the jurisdiction where your business is located and then add jurisdictions that cover each market area you plan to serve.

    If the search reveals that your desired brand name is already in use by another business, head back to the drawing board.

  2. Register the name.

    If the name you want is available, grab it. Fill out the forms and pay the required fees to register the name in your home region and in each region you plan to do business. Consider also registering the name in the regions that include your market area’s greatest population counts to further protect it from use by competing businesses.

Obtaining a trademark

In the U.S., if your business serves only one state, you can inquire with the office of your secretary of state about a state trademark that prevents others from using a similar mark in your statewide area.

A federal trademark provides broader protection than a state trademark and is important if your business serves or plans to serve a market area that crosses state or national borders.

The process of obtaining a federal trademark is long, tricky, and important for two reasons:

  • A federal trademark protects your brand identity from use by others.

  • The process of obtaining a federal trademark steers you clear of the legal hot water that awaits if you obliviously try to use an already-trademarked name, logo, tagline, or other identifying brand element.

To obtain a federal trademark, plan to take these steps:

  1. Determine whether the brand identity you want to trademark is already in use as an established trademark.

    Conduct a preliminary online search of the database maintained by the U.S. Patent and Trademark Office (USPTO). Go to uspto.gov, click on Trademarks, click on Trademark Search, and follow the instructions.

  2. If your desired brand identity appears to be available, hire an attorney who specializes in trademarks to conduct a more extensive search.

    Don’t try to proceed on your own; the trademark process requires professional expertise.

  3. If you get a green light from your attorney, move to secure a trademark as quickly as you can.

    Establish your trademark through what’s called common-law usage or through the rigorous process of obtaining a more-official and protective registered trademark.

Trademarking through common-law usage

After you determine that the brand name, logo, tagline, or other identifying element that you want to protect isn’t already protected, begin to establish a common-law trademark by using the letters TM in superscript (or SM if you’re establishing a service mark) alongside the mark you’re protecting.

In taking the common-law approach, be aware of these shortcomings:

  • Common-law trademark protection is limited to the geographic areas in which your mark has actually been used.

  • You don’t have the protection of a federal registration if another party were to dispute your claim to your trademark.

  • By using the trademark without undergoing the rigorous search and analysis of a formal trademark application, you may be liable for infringing upon someone else’s registered mark. Even after your attorney screens and conducts a detailed risk analysis for your name, additional infringement issues can arise during the trademark application process that preclude your usage of the mark, which is why federal registration is the ultimate form of trademark protection.

Obtaining a registered trademark

For information on federally registered trademarks, count on these resources:

Use the trademark designations TM or SM, in superscript, until your trademark is formally issued by the USPTO. Don’t jump the gun and use the registered mark before your federal trademark is granted. Doing so is called false use and can result in denial of your federal registration.

As soon as you receive your federal trademark, give notice of your trademark in at least one prominent place in every brand communication.