May 7, 2010
When You Can't Trademark Your Name
When You Can't Trademark Your Name Cliff Ennico www.creators.com "I have a business name that I am thinking of trademarking. My concern is, if I do not trademark the name and use it in business, what is stopping someone else from trademarking that name (after I begin using it) and taking it away from me? Is this possible?" In the United States, the only way to protect an unusual or distinctive business name is to register it as a trademark with the PTO - the U.S. Patent and Trademark Office ( www.uspto.gov ). Not everything can be trademarked, however, and even if the PTO grants you a registered trademark, someone else can challenge it on a number of grounds (such as fraud, or infringement of another trademark such that the public will be confused between the two). I've said it before in this column: if you have a name that a trademark lawyer says you can trademark, do everything short of violating the law to register the mark with the PTO. That is the only effective way to prevent other people from using the same or a similar name in the same or a similar business. Beg and borrow from your relatives to pay your trademark attorney's fees. Hit up your credit cards or lines of credit to do so. Getting that federal registration - which entitles you to put the "R in a circle" (reg;) next to your name - will deter a lot of bad guys out there who may be tempted to rip off your name once you start becoming successful. But what if your name cannot be trademarked, or you just can't scrape together the money to register it? The law allows you to claim your name as a "common law" trademark by putting the letters "TM" next to the same wherever it appears. So, for example, "Succeeding in Your BusinessTM". Technically, you're supposed to use the letters "SM" when claiming a common law mark for a service as opposed to a product, but the latest version of Microsoft Word doesn't have "SM" in the "Symbols" directory, only "TM", so you're stuck using that (memo to Bill Gates - while you're working the kinks out of Office 2007, could you fix this glitch, please? Thank you.) As Mark Twain once said about investing, "if you have to put all your eggs into one basket, watch that basket!" The same applies to "common law" trademarks. If you are using one, be sure to document exactly when you first used the mark in interstate commerce. Keep files with examples of stationery, correspondence, product labels, marketing brochures and other literature that clearly shows the "TM" next to your name and the date(s) you were using that name in commerce. If someone who registers your name as a trademark later on claims they were "first to the courthouse" and tries to sue YOU for infringement, the burden will be on you to prove that you were using the name before the other guy did. You will need every scrap of evidence you can muster. But I would go beyond that if I were you. Check the PTO's records on a monthly or weekly basis, and the minute you see someone has filed an application to register your name as a trademark, don't wait for the PTO to take action. Instead, file a challenge or protest of the other company's application, and let the PTO know you've been using the mark in interstate commerce before the application was filed. Your trademark attorney will know how to do this. At the same time, your trademark attorney should send a scathing letter to the company that applied to register the same name as yours, telling them to withdraw their application and demanding that they "cease and desist" using your name. The letter (called a "cease and desist letter", appropriately enough), should be sent by registered or certified mail, along with copies of documentation showing exactly how long you have been using the common law trademark in commerce. Common law trademarks can be effective, but only if you are diligent and stay on top of what your competition is doing. If a competitor registers your name with the PTO and continues using the name for five years without a challenge, the registration will become "uncontestable" and you won't be able to challenge it. While you may be allowed to continue using your name if you can prove you were using it in commerce before the other guy registered his "uncontestable" mark, if the other guy is a Fortune 500 corporation with millions of dollars and an army of lawyers to make your life miserable in court . . . Cliff Ennico ( cennico@legalcareer.com is a syndicated columnist, author and host of the PBS television series 'Money Hunt'. His latest books are 'Small Business Survival Guide' (Adams Media, $12.95) and 'The eBay Seller's Tax and Legal Answer Book' (AMACOM, $19.95). This column is no substitute for legal, tax or financial advice, which can be furnished only by a qualified professional licensed in your state. To find out more about Cliff Ennico and other Creators Syndicate writers and cartoonists, visit our Web page at www.creators.com . COPYRIGHT 2007 CLIFFORD R. ENNICO. DISTRIBUTED BY CREATORS SYNDICATE, INC. Permission granted for use on DrLaura.com.

Posted by Staff at 1:50 AM