Shumaker attorney Doug Cherry assisted Bradenton-based business O.E. Wheels Distributors in obtaining trademark and design patent protection for its new brand 4PLAY® wheels. Doug is pictured on the right with OEW President Lance Bullock.
Almost every business has a brand. Establishing strong trademarks goes hand-in- hand with establishing strong brands. Here is a simplified primer on the steps to do so.
What is a trademark?
A trademark is a word, symbol, slogan or design used to identify goods and services and distinguish them from others. While trademarks identify products (ex: Big Mac® and Apple iPad®), service marks identify services (ex: McDonalds® and Amazon®).
What should I consider before adopting a mark?
- Choose your mark carefully. Not all names/designs are entitled to trademark protection. Generic or descriptive names, like “Creamy Ice Cream” or “Sarasota Furniture Restoration Experts,” often get little to no protection (at least initially) since they simply describe the product or service. Better marks are words or phrases that are suggestive (ex: NETFLIX), arbitrary (ex: APPLE for computers) or fanciful (ex: VERIZON). Your brand name doesn’t need to inform consumers what your business does. This is done through marketing or descriptors (ex: APPLE watch or VERIZON wireless services).
- A clearance search should be performed before adoption or as early as possible. You need to be the first to use a mark, at least in the geographic area where you wish to do business. If someone else first used the mark (or a confusingly similar variation), you may be infringing on their rights by using it. When vetting marks, you can preliminarily check on the USPTO website to see if anyone else has registered it. Even if you don’t see something of concern, hire a trademark attorney to do a thorough check and advise you as there’s more to it. You’ll spend a lot of money establishing your brand, and you don’t want to waste it by using a mark that you’ll need to stop using because of infringement.
- Apply promptly. Once you’ve decided on the mark you want to use, file a Federal intent-to-use application, which allows you to stake your priority rights from the filing date even before you use it. If you have already been using the mark for some period of time, it may not be too late to file.
- Once the mark is clear, use it properly. Once you’ve applied to register your mark, you need to actually use it in commerce within a certain period of time. Use the mark consistently. For instance, if the mark is 4PLAY, don’t also use FOURPLAY. Prior to obtaining registration, you may use a TM for trademarks and SM for service marks to indicate your “common law” rights. Once the mark is Federally registered, use the ® symbol. Unlike patents or copyrights, so long as you continue to use your mark in commerce and periodically maintain your registration, your rights in them may never expire.
- Benefits of Registration. Neither Federal nor State Registration is mandatory. If you’re the first to use the name, you have limited rights under the common law in your geographical market. Federal (U.S.) registration provides these extra benefits:
- Nationwide priority from filing date
- Stronger remedies for infringement
- Shows up when others search the name
- Evidence of validity and ownership
- Basis for registration in foreign countries
- Can register with U.S. Customs, which may watch for use of your mark on imports
- Allows for easier license/transfer of title
Trademarks are inexpensive to obtain and a valuable asset. Goodwill increases with each day’s use, each advertisement, and each sale. It’s critical (more than ever in a world of e-commerce) to protect brands in order to establish goodwill and set yourself apart from competitors.
About the Author:
Board Certified in Intellectual Property Law, Doug Cherry’s areas of concentration include intellectual property (patent, copyright, trademark, trade secret, publicity rights and unfair competition) consulting, acquisition, licensing and litigation, as well as technology, cybersecurity and data breach law. Doug, a Sarasota native, former President of the Sarasota Country Bar Association and former Chair of The Florida Bar’s Computer & Technology Law Committee, is one of more than 35 lawyers in Shumaker’s IP Practice group.
This article is of a general nature and should not be construed or relied upon as legal advice.
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