By jean d. sifleet, esq. Cpa
It’s very upsetting to find someone using your business name, or one that is “confusingly similar.” If you’ve taken legal steps to protect your name, you are in a much better position to protect your interests.
Massachusetts recently updated its trademark laws (effective October 29, 2006), adopting most of the Model State Trademark Bill. This provides opportunities for smaller companies to take advantage of trademark protection at lower cost than a federal trademark registration.
For many businesses, however, state-specific protection is not enough.
If you are successful, you will be copied.
I learned this lesson the hard way. When my business partner and I started Tables to Teapots (a retail store in Acton, MA), we had no idea how successful we would be. After several years of hard work, a TV feature on Chronicle and a story in Inc. Magazine, business was booming. Then one day, a customer came in and said, “I didn’t know you’d opened up in New Hampshire.” Well, we hadn’t opened up in NH. But, an enterprising copycat had opened a store and called it NH-Tables to Teapots.
We were lucky. While we had the rights clearly established in Massachusetts, we had not filed a federal trademark protecting the name in other states. By taking an aggressive position, I was able to convince the NH copycat to change the name of his business.
Legally, our “rights” to the name attached from the time we used it in commerce. However, we would have been on stronger footing if we had registered the trademark at the federal level.
What does trademark registration protect?
Trademark protection is available for any word, phrase, name, symbol, sound … that identifies or distinguishes your product or service from those made or sold by others. It includes the exclusive right to use the mark in connection with the goods and/or services listed in the registration. (trademark applies to products; servicemark applies to services.)
Confirm that your name is available.
Before you invest in applying for a trade/servicemark, it’s important to search and see if anyone else is claiming the name or a similar name. You can search online (e.g., conduct a search on Google) for the name and for the Internet domain name (e.g., networksolutions.com). You can also search on the website of the United States Patent and Trademark Office (www.uspto.gov). These searches do not guarantee that the name is not in use, but they are a good indication of availability.
Steps to Protect Your Name
1. Reserve the Internet domain name(s). You may want to also reserve similar names or common misspellings.
2. Use (TM) or SM symbols. Put the trademark (TM) or servicemark (SM) symbol on your materials. This puts the world on notice that you are claiming the mark.
3. Register in your state. Massachusetts updated its trademark laws in August 2006 and is now more consistent
with other states. For more information about Massachusetts check out: http://www.sec.state.ma.us/cor/corpweb/cortmsm/tmsminf.htm
4. Register in the U.S. The federal filing fee ranges from $275 to $375 per class depending on whether you file electronically. Once approved, you can use the (r) (stands for registered mark), and the protection can be renewed indefinitely as long as the mark is used in commerce. http://www.uspto.gov/main/trademarks.htm
5. Register Internationally. International registration has become much easier with the Madrid Protocol (effective November 2003), which allows a mark to be protected in several countries by filing a single application.
In conclusion, if your business name, tagline or brand is important to your business, then it makes sense to take steps to legally protect it. The level of protection – state, federal or international – depends on where you do business. As business becomes more global every day, it is smart to be proactive about protecting your business name.
This article is excerpted from Business Attorney Jean Sifleet’s book, Advantage IP – Profit from Your Great Ideas (Infinity 2005). To learn more, visit her website at http://www.smartfast.com/. As a member of Hassett & Donnelly’s business practice group, Jean focuses on counseling privately held companies on a broad range of business matters including leveraging intellectual property and successfully implementing ownership transitions.
