By S. Timothy Buynak, Partner
Your intellectual property is a key asset of your business; significant efforts should be taken to ensure it is adequately protected. It is important to secure and register what is (or what will become) your intellectual property. This will save costly efforts later on to acquire your business name or mark now being used by another individual or entity, or to defend any actions brought against you for alleged violations of another’s intellectual property. Intellectual property includes everything from confidential information that is not disclosed publicly, to patents, including:
It is important to plan your business venture thoroughly and well into the future, preserving its potential value by claiming and appropriately registering all intellectual property.
Initial Trademark Registration Process. One of the most common intellectual property ownership situations we come across at Buynak, Fauver, Archbald & Spray is in the trademark arena – words, phrases, symbols or designs that distinguish one person’s goods or services from another’s. To gain nationwide protection of your trademark, the design/logo/words must be filed with the United States Patent and Trademark Office (USPTO), after a search has been undertaken to ensure that the trademark is not already registered or in existence elsewhere (common law mark).
There are a number of decisions that must be made before you can register your trademark with the USPTO. Most trademarks are registered online, using the USPTO’s “Trademark Electronic Application System” (TEAS).
Choose your trademark. Besides making sure that your trademark is not already in use the USPTO has additional guidelines that it follows when deciding whether it will register a trademark. It will not register a trademark which is a) the generic name of a good; b) immoral, deceptive or scandalous; c) merely descriptive of the goods or services; d) disparaging or falsely suggests a connection to a person, religion, belief or symbol; e) includes the flag or coat of arms of the US or another country; f) solely geographically descriptive; or g) consists of a name, portrait or signature identifying a particular living individual, except by that individual’s written consent. These guidelines must be considered when creating your trademark.
Design mark or word trademark? You can choose to register either a “design” mark or a “word” mark. Under a design mark your words or logo are registered in the form of specific colors, fonts, logos, or pictures. Thus, infringement of this type of trademark would only occur by someone else using your specific logo, font, color or picture and therefore provides only narrow protection.
In this case of a word mark, only words should be registered in black and white, without any design element or special font. Any infringement of the words/phrases/symbols themselves is a violation of your trademark – hence this category provides much broader protection. Thus, it is best to file a word mark first or contemporaneous with the filing of a design mark.
“Intent to Use” or “Use in Commerce”? You may file your trademark as either an “intent to use” or “use in commerce” application. “Intent to use” occurs when your trademark is not yet used, but you would like to protect the trademark for the future. This involves filing a statement of use and paying an additional fee prior to registration once there is use of the mark in interstate commerce. A “use in commerce” application is filed when there is already use in interstate commerce of the mark in connection with the goods/services. We strongly suggest that you begin the registration process as soon as you consider a name or design. Otherwise, you may invest a great deal in a product, have the “perfect” name (trademark) for the product, and start your marketing for the launch, only to find that the trademark/service mark cannot be registered or used in commerce due to prior use by third parties.
Run to Register. Trademark law has recently changed so that the first to register gains right rather than the first to use. Thus, it is imperative to register your mark after making those initial decisions.
While this Advisory concerns itself with trademark registration, there are additional steps necessary to “police” your mark and eventually, make it incontestable. Similarly, there are usual practices and procedures to protect your other intellectual property. We, at Buynak, Fauver, Archbald & Spray, enjoy working with established businesses and ventures to help them succeed in their endeavors and achieve their dreams. We look forward to being of service to you!
S. Timothy Buynak, Partner
TBuynak@BFASLaw.com
(Direct) 805.966.7575
This Advisor is one of a series of business, real estate, employment and tax advisories prepared by the attorneys at Buynak, Fauver, Archbald & Spray, LLP. This Advisor is not exhaustive, nor is it legal advice. You should discuss your particular situation with us or with your own attorney. Our legal representation is only undertaken through a written engagement letter and not by the distribution of this Advisor.
[1] We have had situations in which national and international enterprises acquire companies solely for their name and pay millions; software companies are developed around this same concept – to be acquired for their software, their IP.[/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]
