3 Reasons Why Trademarks Matter By Gail Berritt

Many clients come to me asking whether a name or design is protectable and whether it’s worth the cost.  Here’s my advice in a nutshell.

1.  STRONG TRADEMARKS INCREASE THE VALUE OF YOUR BUSINESS.

Trademarks can be words, designs or the two in combination.  They are the first thing that differentiates you from your competition.  A strong mark creates valuable goodwill. I have read that as much as 1/3 of the value of a business can be tied to its brands. Everyone knows that the word iPod is associate with Apple Computer and that the swoosh design on athletic shoes is associated with Nike.  However, you don’t have to be famous to get the benefits of trademark protection.  If possible, pick a mark that is arbitrary or fanciful; “Apple” for computers is an example.  These are the strongest marks. Try to steer clear of marks that are descriptive of your business.  I realize this is not always desirable. Marketers want to create an easy association between your goods or services and your brand name. A mark that describes what you do avoids having to explain the basics of your business to everyone you meet.  For example, just about everyone can figure out what business you are in if you call yourself “The Rugged Shoe Factory”.  However, you will have more difficulty protecting a descriptive mark under trademark law, so the tradeoff may not be worth it.

2.  AVAILABILITY SEARCHES PROTECT YOUR INVESTMENT IN A MARK AND HELP YOU AVOID INFRINGEMENT CLAIMS.

Before you start to market under your mark, do a search.  Worse than a weak brand is finding out that you don’t have rights to your mark because someone else is already using it for similar goods or services.  So, do your homework and hire a professional searching company for your key brands.  A good trademark attorney can help you decide what marks are worth searching and can review a search report for availability.  There are many options and not all of them are expensive. Also, you can do your own "knock out” search online at www.uspto.gov.  Click on “Search Marks” under “Trademarks.”  Search the Internet and domain name registries, too.  A search company will do all this for you and more, but you can get sense of what’s out there by doing a knock out search first.  If you find something that’s an obvious problem, you just saved yourself the cost of a professional search and prevented a potential infringement claim.

3. FEDERAL REGISTRATION GIVES YOU STRONGER ENFORCEMENT RIGHTS.

Even if you don’t have the piggy bank to register all your brands, pick the key ones and apply to register them with United States Trademark Office.  A registration symbol next to your brand not only gives you instant credibility with customers and investors, but also gives you certain legal rights and leverage.  For example, you can claim nationwide protection from the date that you filed your application.  Even if you only set foot in Southern Massachusetts for a single trade show, you may be able to enforce your brand against a Western Massachusetts based business using a similar mark on similar goods.  In fact, I did just that recently for a N.Y. based client who is in the café business.  The owner of the Massachusetts café changed its name, and no court action was needed.  The trademark registration was enough. And you don’t need to wait until you are actually using a mark to protect it.  In the U.S., you can file an “intent to use” application and get a jump on the competition.

So, act now to protect your business, offensively and defensively, by choosing a strong mark, doing a search, and applying to register your most valuable brands.

Gail Berritt has 23 years' experience as an intellectual property and licensing attorney.  She is praised by her clients for taking difficult legal concepts and making them understandable, as well as getting deals done in a cost-effective manner while protecting her clients’ interests.  She is assisted in her trademark practice by another very experienced trademark and licensing practitioner, Gerry Fifer.  Gail’s firm, Law Offices of Gail Berritt, has been helping small businesses navigate the legal terrain for nearly 10 years.

www.berrittlaw.com

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