The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
When can I use the trademark symbols TM, SM and ®?
Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.
—from the U.S. Patent and Trademark Office
There are, of course, limits to what you can trademark. Indeed, it’s often frustrating to find that you can’t trademark the simplest names. That’s because the U.S. Patent and Trademark Office requires a mark to be “distinctive” and not simply “descriptive.” For instance, you can’t get a trademark for a health resort called “Spa,” because it’s merely descriptive. But you almost certainly could trademark the name “Spa” for a brand of body lotions (assuming it wasn’t already trademarked by someone else).
In fact, if you’re inventing a whole new product category, you may need to come up with a generic way to describe the category in order to trademark your chosen name. A client of mine, Patrick McConnell, invented a dry-land snowboard, which he called the MountainBoard. To get that name trademarked, however, Patrick had to come up with a generic term—“all-terrain board”—to avoid his brand name’s being viewed as merely descriptive.
Doing a trademark search
Getting the trademark process under way is fairly simple, but you’ll want to discuss the trademark process when you see an attorney (Week Three), as well as discussing other protections of your “intellectual property”— such as copyrights and patents.
To get started on your name and trademark search, begin at the website of the U.S. Patent and Trademark Office. Find the section for Trademarks and follow the links for “Search.”
Try different ways to search (“New User Form,” “Structured Form,” etc.) to see the various results. Begin by searching as broadly as possible—singular and plural forms of your words, similar words, alternate spellings, and so on. Results may show both “live” and “dead” marks. Dead marks are those that previous owners have let lapse.
Keep in mind that even if a particular name or mark does not show up as being taken, this does not necessarily mean you will be able to trademark the name/mark. Some names may already be in use in interstate commerce but may not have been officially registered. Other names/ marks may not be allowed to be registered as trademarks. So don’t print up thousands of dollars worth of brochures just yet!
Check It Out
Start your trademark search at the U.S. Patent and Trademark Office website, www.uspto.gov
In Canada, you can do a trademark search on the website of the Canadian Intellectual Property Office, www.cipo.ic.gc.ca
And remember, you may run into difficulty if you use a name that is similar to a bigger, better-known company even if you think you can get a trademark. McDonald’s, for instance, has been very effective in keeping others from using the “Mc” as a prefix for many different kinds of products and companies. A juice bar company was able to keep other juice bars from using names starting with the letter “J” just by taking them to court. Often, it’s the company with the biggest bank account and most lawyers, rather than the ones with the law on their side, that controls a name or trademark.
If you are going to spend a great deal of money investing in a name and trademark, you might consider using a professional trademark search firm or hiring a trademark attorney to conduct a more complete search.
An important part of choosing a business name and getting a trademark is researching the website addresses that are available. Before the Internet, you might have happily been able to do business in one state without being confused with a business using the same name in another one. Today, however, you need a “domain name” that is utterly unique, not just in your city or state, but in the world.
A “domain name” is the name by which your website is identified and found. It is also known as your company’s URL (which stands for universal resource locator).
Check It Out
Sites you can use to register your domain name include Network Solutions (www.networksolutions.com), Google Apps (www.google.com/enterprise/apps/business), and Intuit (www.intuit.com/domain-name-registration/).
To find out if your preferred URL has already been claimed by another company, you can check with any of the companies that host websites or with the Network Solutions website, www.networksolutions.com. (Network Solutions was one of the original official keepers of the domain name registry.) Type into the WebAddress search box up to 10 names you’d like to use, including the suffix (three-letter code such as .com, .net, .org) you’d prefer. For example, if your desired company name is Widget Manufacturers, type in widget.com.
Don’t be disappointed if your desired business name (even your trademarked name) has already been taken. Today it’s increasingly difficult to find a website name that exactly matches your business name. With so many companies vying for valuable virtual real estate around the world, chances are good that another organization has already claimed what you would consider the perfect URL. And then there are “cyber squatters”— those people (or organizations) that have bought domain names with the intent of selling them to businesses that might want them later. It might not seem right, but even if you get a trademark for your business name, someone else may legally own the right to that domain name, especially since companies can have the same trademark name in different categories.
Try to find a domain name that is as close as possible to your desired company name. Use the entire company name, for example, widgetmanufacturing.com, or adding a “co” or “inc” to the end of the name—i.e., widgetmanufacturinginc.com—if the basic URL is taken. And you can choose a different suffix, such as widget.net, to distinguish your URL from one with the more popular .com suffix.
Although a domain name is only as good as the marketing budget—and the business—that it is attached to, it is, for most, a critical part of doing business. Some people even modify their company names slightly to make sure they can get a domain name that works for them. And, of course, you can always investigate who owns your perfect domain name (by typing it into your browser) to see if it’s for sale, and make an offer if it is.
Ultimately, however, the success of your business won’t rise or fall on your domain name. You will have many other
