Consisting of a name, phrase, symbol or design, your trademark is essential to the identity of your company and your connection with your customers. Given its importance, it’s worth taking a few moments to learn how to craft a good one and then how to protect it.
Developing an Effective Trademark
When creating a trademark, follow these guidelines:
1. Make it Distinctive. When considering a name or symbol for your business, it’s valuable to make it distinctive instead of descriptive, advises Sven Hanson, an intellectual property attorney in Gainesville who has been practicing trademark law for 15 years.
For example, it’s likely a bad idea to use “fluffy” in a trademark for pillows and it might be a bad idea to use “Gator” in the name of a restaurant. The first word would describe any pillow while a business with “Gator” in its name would be confused with dozens of others in this town.
Words like these not only create a weak connection with consumers, they could cause trademark problems.
Trademarks that are merely descriptive often don’t meet federal standards for trademark registration and can be hard to protect, says Hanson.
2. Think Unique. Trademark conflict doesn’t just happen when two businesses use identical trademarks. It can happen with similar ones, too, based on a factor called “likelihood of confusion,” Hanson says. Trademark law is intended to protect consumers from being confused about where products and services come from. If your trademark is too similar to another company’s with similar products and services, you may run into a problem. So, look at competing businesses and make sure the trademark you develop isn’t too close to the competition’s.
3. Consider how it will be used. When crafting a trademark, consider how it will be communicated. If you’re going to use it in text messages, make sure it’s not full of graphic elements that can’t be transmitted. Or if it will be broadcast over the radio or TV, make sure it sounds good.
4. Check the competition. Once you’ve come up with a potential trademark, find out whether someone else is already using it. Do a Google search of your potential name, then check registered trademarks at www.sunbiz.org/corinam.html. Finally, see a trademark attorney.
Safeguarding Your Trademark
Once you’ve developed the perfect trademark you may think you’re protected and you can stop anyone from using your chosen words. Not quite. Consider these points:
1. The use it or lose it rule. When you’ve developed a trademark, you have to use it with your products and services to establish your rights. If you don’t use it, trademark registration won’t protect you should someone else start applying the trademark to other products or services, Hanson says.
2. Protection by profession. A copyright only protects your name or symbol as it is used in your industry. So, a car repair shop operating as “Fast Stop Shop” probably wouldn’t have a right to challenge a beauty salon called “Fast Stop Salon” that’s offering unrelated services and when there is little likelihood consumers would be confused.
3. Protection by state. Trademark law is also tied to the state that you are in. Hanson returns to his example of opening up a restaurant called Gator Zone in Gainesville to illustrate some points about trademark law. “Now I don’t have any rights in Georgia, because I’m not using it in Georgia. If I open up a second restaurant in Georgia, then I start to accumulate rights in Georgia,” he says.
To Register or Not to Register
If you’re only planning to operate only in Florida, you don’t have to file to register your trademark. However, a state registration might be valuable. You can also get a federal registration in addition to your state registration, which may be worth the cost, Hanson says. If you’re considering franchising nationally, it could be critical to get a federal trademark, which protects your trademark even in states where your company doesn’t yet have any locations.
The decision to register your trademark depends largely on how important it is to your profitability, Hanson says. The No. 1 advantage to registration is that it provides notice to companies allowing you to avoid future conflict.
If your trademark is not federally registered, you can indicate its trademark status by using “TM” in a subscript position. The ® symbol means federal registration.
If you do find someone else using your trademark, Hanson advises that you speak to an attorney before taking any action on your own. If you send a letter directly to the offender, they might take action you don’t want them to take, Hanson says. This could include out-of-state lawsuits that are expensive and cumbersome. It’s safer to have an attorney handle it so that you can avoid the pitfalls of striking out on your own.