Clients often ask me: “should I get a trademark” for my business? The answer is usually “yes”, but the analysis is not always straightforward. It is important to assess each of the underlying considerations with an attorney who has some experience in this area. This blog is not a comprehensive explanation of trademarks, but since there are many misconceptions about what a trademark is, and about what registration means, it is worth taking the time to engage in a brief overview of the key issues.
- What is a trademark. A trademark is a word, phrase, symbol, design, color, or any combination thereof, used by a business to identify its goods or services and to distinguish itself from entities selling or providing similar goods or services. A trademark is different from a patent, which protects inventions, and from a copyright, which protects literary or artistic works.
- Must be distinctive. Trademark law protects the overall distinctive look of a trade- or service-mark for a particular product or service, within a particular industry, and sometimes within a particular geographic area. Owning a trademark effectively gives the owner the exclusive right to use the mark. The best trademarks are so pervasive that, from a marketing standpoint, they carry their significant value even without reference to the owner’s name. Think, for example, the Nike “swoosh” or the Coca-Cola Coke bottle.
- Use it. Trademark rights accrue through use, not solely via registration, and such use establishes a business’ common law and state law rights in the mark. These rights protect the owner’s use of the mark in the geographic area where it is used, in the industry in which the products or services are offered or sold, and for those goods and services with which the mark is associated.
- Not all marks can be protected. The marks must be distinctive, and the more distinctive they are, the more protection they afford. A generic or merely descriptive mark is not likely to afford the owner significant protection. One cannot, for example, claim ownership in the name “auto parts”, yet “Advance Auto Parts”, including its stylistic text, color scheme, and the checkered flag is a very strong trademark.
For assistance with any legal matters related to your business or estate planning, contact Fournier Legal Services at firstname.lastname@example.org or 860.670.3535 now for a consultation and planning session.
Joseph E. Fournier is an Attorney and a CPA who has more than twenty years of experience in a variety of business legal matters, including start-ups and company formations, drafting shareholder and operating agreements, contracts, employment law, commercial litigation, tax planning and audit defense, and mergers and acquisitions (M&A). He also handles estate planning matters, such as business succession planning, wills, trusts, and probate.