Establishing a Trademark

Trademarks are often one of the most valuable pieces of intellectual property a business can own since they identify and set a business apart from its competitors. As a result, establishing a trademark can be one of the most important steps in growing a business’s brand.

Many businesses view trademarks simply as a label or emblem (think McDonald’s golden arches), but in reality they can come in all sorts of forms. Federal law defines trademarks as “any word, name, symbol or device or any combination thereof….” Over time that definition has been found to even include color: in 1985 a federal court found that Owens-Corning’s color pink for insulation had obtained trademark status.

When trademarks are best implemented, they ensure consumers that the product being purchased comes from a reliable, identifiable business.  So businesses should consider the adoption and establishment of their trademarks as an important step in their growth.  From a practical standpoint, businesses adopting new trademarks should be careful to pick a trademark that is easy to remember, pronounce and spell.  From a legal standpoint, the trademark should be unique and distinctive.

The goal is to avoid creating a trademark that is likely to cause confusion with already existing trademarks.  The danger of creating a likelihood of confusion is not only being forced to give up your mark, but also possible trademark infringement lawsuits, which are notorious for being lengthy and expensive.  There are number of steps that a business should follow to best protect itself in adopting and using a new trademark.

Trademark Search

The starting point is a trademark search, which allows a business to see what marks are being used, and thus likely off-limits.  Searches can be as vast as a business chooses, but often include the records of the USPTO, state trademark databases, common law records and domain names.  A number of companies specialize in doing these searches.  When the search is completed, an attorney typically reviews it and drafts a trademark availability opinion, telling the businesses whether or not to proceed.

Adopt the Mark

If the mark appears to be available, typically the next step is to begin using the mark (after you’ve finalized what it will look like) on goods for sale, in advertisements and on promotional materials.  Greater use will create stronger common law rights since the mark becomes more closely identified with your business.  For marks not yet registered (we’ll get to that), the use of those “TM” letters you often see can be a good idea too.

Register the Mark

Registration of the mark can be made at both the state and federal levels.  State registration can be done quickly–relatively speaking—and, once approved, the business gains the advantage of state counterfeiting remedies and access to state law enforcement resources.  But businesses intending to do work across state lines, which is almost always the case these days, may choose to skip registration at the state level and instead simply register at the federal level with the PTO.

Federal trademark rights are paramount to state rights so, when possible, businesses should pursue registration with the PTO.  This process takes much longer (often a number of years), and requires patience with the PTO as they examine every last detail of your application (and often ask you to amend it before final approval).  Federal registration, however, offers significant advantages, including the right to sue in federal court; the right to sue for federal statutory remedies, including treble damages in the case of alleged infringement; possible barring of the importation of goods bearing infringing marks (particularly helpful if you business abroad these days — think China); and rights under the Paris Convention, which means that you can get priority rights to foreign trademark registrations (again helpful for international businesses).  The best of advantage of all, of course, is that once registered, you get to put that cool ® symbol next to your trademark.

Establishing a Trademark in International Business

For businesses doing work abroad, which is increasingly common, trademark owners should consider protecting their registered marks in the countries in which they do business.  This can be done either by direct registration in the foreign country, or indirectly through the PTO by trademark applicants seeking to do business in member countries of the Madrid Protocol.  Registration is certainly valuable, but the process is lengthy, often taking in excess of two years.

If you are interested in establishing a trademark for your business, or are interested in learning more about the issues discussed in this article, please contact us.

Author: Andrew Harris

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To continue reading more about the laws that might affect your business, please see the Articles page, or to simply see a list of helpful legal resources for Oregon startups and businesses, please see the Legal Resources page.

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