Selecting and Registering a Trademark

Any business, whether emerging or established and looking to expand, should consider one or more trademarks to help consumers identify the source of certain goods or services.   Regardless of any formal registration, trademark rights are created through their use in commerce.  Therefore, it is possible for different entities to obtain trademark rights in the same trademark for different goods or services or in different geographic locations.  Although state or federal registration is not required to obtain an interest in a trademark, it does provide some additional benefits.

In selecting a trademark, the strength or distinctiveness of the mark is critical to the mark’s overall level of protection.  Generally, the more distinctive the mark, the easier it is to register and prevent the use of that same or similar mark by another.  The strength of a trademark depends on the level of distinctiveness.  Fanciful marks are often considered the strongest, followed by arbitrary marks, then suggestive marks and finally descriptive marks.  Merely descriptive marks are typically not entitled to registration on their own, but may acquire distinctiveness over time.  Generic terms are not entitled to any trademark protection.

As noted above, a trademark is created through its use in commerce and registration is not necessary to have rights in a trademark.  Using an unregistered trademark gives the user common law trademark rights in the geographical area in which the mark is used, and slightly beyond in some cases.  If the mark is being used in interstate commerce, federal registration may be possible.  If the mark is only used within one state, state registration may be available.

Whether a mark is available for use and whether it can be registered are different inquires that need to be made.  Before an entity chooses a trademark and begins using it in commerce, it is always recommended to obtain a clearance opinion regarding the proposed mark.  A detailed search report will limit legal liability, as well as prevent wasting time, development and money on a mark that may already be in use by another, thus possibly requiring the entity to change its mark after years of consumer association and goodwill.

Trademarks are arguably the most important asset a business can have.  A strong, distinctive trademark is essential when trying to grow a customer base and become recognized as the source of a particular good or service.  As long as they continue to be used in commerce, trademarks can last in perpetuity.  Making an initial investment in selecting and securing your trademark will go a long way in successfully growing and maintaining your business.

For more information or to speak with us about your legal issue, please contact us in Ann Arbor at 734-665-4441.  To learn more about Pear Sperling Eggan & Daniels, P.C., or any of our attorneys, please visit us at www.psedlaw.com.