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Trademark Basics for Business Owners

For many small businesses, establishing a strong brand identity constitutes a considerable investment. Whether your business offers products or services, you want your customers to be able to easily distinguish your business from your competition. Part of that brand may be a catchy name, phrase, logo or design that you want your customers to identify with your business. Here are some trademark basics you should know before investing considerable time, effort and resources in developing and promoting your mark.

What is a Trademark?

A trademark can be a word, name, phrase, design, symbol or logo that you use to identify your business and to create an identity distinct from your competitors. Although they are often confused, trademarks are distinct from copyrights and patents. A copyright protects the original expression of an idea, and includes such things as books, music, art, photos, or designs. A patent, on the other hand, protects an invention.

When Can I Use the Trademark Symbols TM, SM and ®

Any time you want to claim the right to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office. However, you may only use the federal registration symbol "®" after the Trademark Office actually registers your mark, and then only with the goods and services listed in your trademark registration.

Selecting a Strong Mark for Your Business

When selecting a name or logo for your business, it is important to have an understanding of the types of marks that are afforded the strongest legal protection from the standpoint of trademark law. In general, an original or highly distinctive mark is strong and will prevent competitors from copying or using your mark, while a generic or descriptive mark will afford you little legal protection from copycats. Generally, the four types of marks, from strongest to weakest, are as follows:

  1. Coined or Arbitrary Marks. These are the strongest marks and the most easy to protect because they are inherently distinctive. A coined, or fanciful mark is an invented word with no dictionary or other known meaning, such as Google or Ebay. An arbitrary mark, on the other hand, is a common word or symbol not ordinarily connected with the product, e.g., Amazon.
  2. Suggestive Marks. Suggestive marks are those which suggest, but do not describe, qualities or a connection to the goods or services. These are also considered strong marks. An example would be "At-A-Glance" for daily planners.
  3. Descriptive Marks. These marks are words or designs (e.g., a picture of a torn sofa for sofa repair services) which simply describe the goods or services at issue. These are generally weak marks and sometimes will not be registered by the Trademark Office if it determines that the mark is merely descriptive. "Creamy" as a mark for a yogurt is an example of a descriptive mark that offers very weak protection against competitors who want to use an identical or similar mark for a competing product.
  4. Generic Marks. These are the weakest types of marks and do not qualify as marks in the legal sense. These are common, everyday names for goods or services that everyone has a right to use, such as "Coffee Shop."

Clear the Trademark Before Using It

Before investing any considerable time, effort or expense in designing and promoting a mark to brand your business, make sure you hire a professional to determine whether anyone else is using a similar mark for the same goods and services. Clearing a trademark before using it will prevent you from infringing another business's mark, which may require you to stop using the mark. Also, you will not be able to register a mark if the Trademark Office deems it likely to cause confusion with another registered mark.

Register Your Mark

While a trademark can be established by use without registering it with the Trademark Office, registering your mark offers several advantages, including a legal presumption that you own the mark, public notice of your ownership, and additional legal rights against potential infringers.

Frank J. Monteleone

Frank J. Monteleone

Monteleone Law

11 Broadway, Suite 615

New York, NY 10004

fjm@monteleonelaw.com