Jonas Jacobson: Tradema"R"k Basics for Start-ups

Ever wonder how trademarks work? Not sure when you're supposed to get one or what it really means? Do you know what makes a good name for a business from a legal perspective? Jonas does and he's here to share his knowledge for this week's Guest Expert Tuesday.  


Tradem"R"k Basics for Start-ups

A trademark is an exclusive right to use a word, name, symbol, device or phrase to identify and distinguish a business's goods or services to a consumer: think of a Coca-cola, that  NBC chime,  even "GreenhornConnect". The idea is to allow people to recognize the source of products or services. 

Trademarks should be registered either in a state, or federally, because, amongst other things, registration lets everyone know the Mark's holder was first to the party. If a later arriving competitor seeks to use the same Mark for the same purpose, then the registration could offer significant protection.

The grant of rights isn't over all things of the same name...  Both “Puppy” brand slippers, and "Puppy," say, scooters,  could be registered, because they are different kinds of things. Likewise, both "puppy" and "dolphin" could be trademark brands of slippers (unless they have already been registered).

Naming your business, and registering it, is a decision that should be made very early in its life. If you have already started using the mark and have to choose another, you'd have to go all the way back and tell your customers your new name. Way to give marketing an aneurism! So how to register?

(A) You Need a Name.

Probably, you also want a symbol, since you are likely going to want to register a design. However, talk to the designer after the lawyer, for reasons I will soon describe. In order of my preference for simplified registration, the name should be:

  1. a nonsense word (google);
  2. the mis-spelling of a non-nonsense word (flickr);
  3. the configuration of non-nonsense words in a way that creates a word which doesn't mean anything (Microsoft);
  4. a non-nonsense word applied in a context separate from its traditional context (Apple);
  5. a non-nonsense word combined in a sensible way with another non-nonsense word (Home Depot);
  6. a nonsense word describing a ridiculously common non-nonsense word (Jones' Shoes);

(B) Lawyer up!

First, be aware that your lawyer might tell you that your name is taken, or that registration might involve future problems. Since risk tolerance is strongly correlated with pocket depth, if you are working on a start-up, consider choosing a new name if your lawyer suggests that either your assumed trademark is taken, or if it is likely that it will be problematic and time consuming for you to obtain registration. Screw ups made by people who did not use lawyers, or used LegalZoom or whatever, are a tremendous source of work for lawyers, since fixing a problem almost always means more fees than doing it right the first time.

(C) Speaking of fees...
The important thing for a start-up to know here is that the more "classes" your trademark is filed in, the more expensive it will be. A class connotes the "kind of thing or business" your trademark is going to be directed to (remember "slippers" and "scooters" ). Naturally, however, the more classes a Mark is registered in, the more protected it should be.

(D) Protecting your mark.

Once registered, assuming the registration goes smoothly (an occasional if) you have an obligation to protect your trademark. You cannot let it become generic, which might mean you have to send a nasty letter if you catch someone using your Mark. Certainly, you have to use your Mark yourself.

Trademarks are a valuable and relatively inexpensive form of intellectual property protection. Don't go invest too much in marketing without one.

Jonas Jacobson is a lawyer helping start-ups get organized, who devotes a portion of his practice to litigation. You can find him on Twitter and writing regularly on his blog.



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