Written by: Caldwell

Building Your Business

Trademarks are an effective way of protecting the name and brand of your ideas and products. They offer your protection from copycats and help prevent competitors from squatting or profiting from your business’ goodwill. A trademark strategy will depend on the needs and goals of the businesses that use and own them.

The Difference in Ownership and Registration

A trademark gives its owner the right to exclusively use the mark to identify a single source of origin for specific goods and services and to distinguish themselves from others. The owner can also prevent others from using similar marks that would create confusion in the marketplace. Words, phrases, and symbols can generally be protected marks. Oftentimes, people are under the mistaken impression that you need to register a trademark, whether on a federal or state level, to become the owner of a trademark. In fact, ownership arises through the use of a distinctive mark in commerce. A mark is distinctive if it can identify a single source of goods or services. Without registration, your ownership and corresponding rights are, however, limited to the geographic area in which the mark is used. Registering a mark, particularly with the United States Patent and Trademark Office (USPTO) provides the owner with significant benefits, such as evidentiary presumptions regarding ownership and validity, an exclusive right to use the mark nationwide and the right to use the registered trademark symbol: ®.

Choosing a Name is Harder than You Think

Choosing your name and owning your name are not the same thing. Dana Donofree, the CEO of AnaOno, an intimates company for those who have undergone surgery due to breast cancer, “tell[s] early-stage entrepreneurs that the hardest thing that you will ever do when you start your business is name your business.” Only after 10 years was the company granted registration of their brand due to a competitive lingerie business with a similar name. Dana’s experience is common and shows just why planning out your branding strategy is a vital stage towards securing your place in the market and trademark industry.

The Limiting Nature of Trademarks

Businesses and other entities will acquire trademarks for the deliberate blocking of others within their industry. This exclusionary nature requires a proactive approach to ensure the success of your business. The USPTO requires that trademark holders prove that you are using the mark in commerce. However, you can still apply even if you are not actively using the mark in commerce yet, but your intent to use it in the near future. This allows people to apply for the trademark, while in the meantime, blocking everyone else from using or registering the name during the pending examination period.

Not all Trademarks are Exclusionary

AnaOno practices a non-exclusionary usage on one of their trademarks. The company owns the rights on a commonly used word: F(OO)B® (fake boob), but Dana Donofree has no intentions of limiting her community from using it. She says “it’s different when you are an impact driven, socially responsible business.” The affiliated community is able to express itself through this word, while the trademark offers the brand protection against major competitors capitalizing on it. However, there are some legal implications with not enforcing a trademark.

To Enforce or Not Enforce?

A trademark owner can choose to enforce their rights by sending cease and desist letters to others using identical or similar marks in the industry. If the issue is not resolved with such letters and the owner wants to take legal action, it typically becomes an issue of proving who used the mark in commerce first, among other potential legal issues, regardless of registration. The lack of enforcement may result in loss of the trademark, if it’s inactive for 3 years, which makes the mark potentially available for the taking. Additionally, while benefiting a community, as in the case of AnaOno, not monitoring your trademarks may result in infringers using them without your knowledge, thereby taking advantage of your business and reputation, also known as the good will of the trademark. It is important to monitor your trademarks regularly in order to develop an enforcement strategy that is in line with the goals of the business.

Marking Your Trade

Trademarks, while being exclusive intellectual property, may benefit not only the business but also the community it serves. AnaOno serves as an example of how a company essentially trademarked a word for their community, while also keeping their competitive edge in the market. Furthermore, careful market and name consideration, along proper research, prove crucial in determining the next steps for an aspiring business owner before potentially running into ownership issues.

Contact us at Caldwell to discuss your trademark strategy and business needs.

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