Mark My Words: Protecting Your Startup with Trademarks




  • — February 27, 2017

    The importance of your startup’s name is hard to understate. Your name is the first step to making your business identifiable amongst a vast sea of competitors. It embodies your key attributes, and if done right, rolls off the tongue and triggers terrific stories.


    Most entrepreneurs today understand the importance of a good name. Often times, however, many don’t understand the importance of protecting their business and product names.


    Because trademark laws and issues can be complex, we’ve compiled some important facts and tips to help you navigate the trademark terrain.


    Trademark 101


    A trademark protects names (Apple), symbols (Nike’s Swoosh) and other identifying marks that are used to identify the source of goods and services and ensures that other’s do not knowingly or unknowingly use a name that would make it difficult for a consumer to distinguish between the offerings of one company and another.


    In the United States, first use establishes common law trademark rights, but these rights only cover the geographic area within which the trademark is used. A far better route is to secure a registration at the U.S. Patent and Trademark Office (USPTO), as this provides nationwide rights to trademark.


    The Polaroid factors


    When it comes to enforcing trademarks, the Polaroid Factors — derived from a well-known court case — are used as a guide. Basically, the factors are a series of tests that allow the court to determine the likelihood of confusion between one mark and another.


    Here is a deeper dive into understanding some of the elements examiners look at when reviewing a mark at a trademark office.


    Preliminary or comprehensive screening?


    Often times, business owners are unsure whether they should do a preliminary trademark screening or a comprehensive screening, also called a full screening. A preliminary trademark or “knock-out” search tells you that there are no obvious conflicts. But it does not uncover all potential issues.


    A comprehensive trademark screening is performed by specialized search firms and trademark lawyers and, as its name suggests, is a more thorough search which can uncover names that may not be registered but could still pose a threat in the form of confusion.


    So which should you choose?


    If you have the budget, a comprehensive trademark search is always the better choice. But at the minimum, you should conduct a preliminary search. Whichever route you choose, make sure you do some sort of a search before you try to register your name — certainly before you use it in doing business.


    The difference between trademarks and URLs


    First off, it’s important to know that domain name registration doesn’t give you the right to a trademark. Just because you have registered a name doesn’t mean you have been granted a trademark. That comes through the USPTO, not a domain registry. In order for the domain name to be deemed a trademark, it must have received registration as a trademark.


    Conversely, having a trademark does not automatically give you the right to a certain domain name. In order for a trademark owner to obtain rights in a domain name, they must purchase the domain name from a domain registrar such as Sedo or Hostgator.


    It may come as a surprise that almost anyone can buy your same domain name with a different top level domain, in many cases. For example, if you own the domain name my-startup.com, other people can generally buy my-startup.net or my-startup.org. When registering a domain name be sure to also register all possible variants, even if you do don’t use them.


    App trademarks


    A common area where trademarks are misunderstood is the app world. App developers often make the mistake of thinking that because their app is available in the app store, it is available as a trademark. That is not the case. A non-app business similar to yours that has the same or similar name could view your app name as infringement.


    Maintain, monitor and enforce your trademark


    After you’ve filed for and received your registration there’s still work to be done. To keep a registration alive, the owner must file maintenance documents at regular intervals. Failure to do so can result in the cancellation of the trademark.


    If you’re not monitoring your mark for potential infringements (both online and offline) and responding to those infringements, you could lose your ability to protect it. This is where a trademark lawyer can come in handy, as it’s their job to help monitor and enforce the use of your mark online.


    At the end of the day, trademarking your name allows you to act as a referee. And just as a referee will penalize a team for being off sides, a registered mark allows you to call foul on brand encroachers.

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    Author: Margaret Wolfson


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