The Birth of Your Business: Naming the Baby.

Potential Trademark Issues Associated when Creating a Name for Your Business

In the development of a business plan, critical features include choosing a name for a business entity, developing a marketing plan, promoting the name and business and eventually establishing a domain name and web presence. While it is tempting to name the business in the early stages to establish an identity for the new venture, this is a risk-filled endeavor as few businesses have properly secured trademark rights and registrations for the new name.
Frequently, the first attempt of naming the new business venture is the establishment of a domain name; for example Many new businesses rush, enthusiastically, to secure this domain name at the very early planning stages and before the venture has launched to ensure that the domain name will be available for future use. While this may seem a prudent step, the very first task in naming this new venture should be to secure the Federal trademark clearance and registration of the business name and trademark. Far too often, new ventures invest significant resources in securing a domain name prior to clearing and securing the Federal trademark registration. Many issues often arise if these critical steps are not taken to clear and register the Federal trademark.

Establishing First Use of the Trademark in Commerce

The new entity may be staking its claim and starting to accrue common law rights in its name by use of the name in commerce even if a United States trademark application is not filed. Common law rights have limitations and cannot replace the benefits gained by filing a United States trademark application. Further, a new entity may be staking its claim and starting to garner rights to the name over competitors with its first date of actual use of the trademark in conjunction with the goods or services in interstate commerce but again, this actual use cannot replace the benefits gained by filing a United States trademark application.[1]

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A Rose by Any Other Name – May or May NOT be a Rose:

A Rose by Any Other Name – May or May NOT be a Rose:
The Distinguishing Characteristics of Federal Marks.

The need for a thorough understanding of the nuances of law surrounding federal marks can arise at unexpected times.   During the practice of any facet of legal procedure, clients’ needs can include establishment and protection of property or rights, including federal trademarks, service marks, collective trademarks and collective service marks, collective membership marks, and certification marks.  While the ‘titles’ of these marks seem quite similar, or perhaps even overlapping, their functions each are unique.  Differentiating between them requires understanding of the intrinsic characteristics of various federal marks.

The laws governing federal marks can be found in the United States Code and the Code of Federal Regulations.  Chapter 15 of the United States Code encompasses the Lanham Act which is the federal trademark statute.  Also, since trademarks are not provided for in the United States Constitution, the federal government controls their registration and use through the Interstate Commerce Clause.

Federal Trademarks

Federal trademarks are used on tangible goods or products to identify the source or origin of goods and are registered and protected by federal statute [i].  A federal trademark is used to identify the origin of shoes, fruit, sporting equipment, or any other tangible goods.  A federal trademark which is placed upon or is part of said items is “any word, name, symbol, device, or any combination of these options”[ii].  This definition encompasses groupings of words or logos.

Case law has also allowed for a single color or a multitude of colors to function as a trademark.  The Federal Circuit held that Owens-Corning could use the color pink to distinguish and identify its residential fibrous glass insulation from competitors in the marketplace [iii].  The Supreme Court also held that a single color may serve as a trademark[iv].  Both the Federal Circuit and the Supreme Court noted that it was important that the trademarked color serve no utilitarian purpose but merely distinguish the goods from those of competitors[v]

The United States also recognizes that a distinctive sound may be trademarked.  The National Broadcasting Corporation (“NBC”) was able to trademark the sound of its chimes preceding a broadcast[vi].  Also, Metro Goldwyn Mayer Lion Corporation (“MGM”) has a trademarked its lion’s roar which is heard at the beginning of many MGM movies[vii].

Regardless of what trademark the owner chooses, it must be used in association with goods in interstate commerce.  A federal trademark is owned by an individual, company, or other entity and used to distinguish its goods and services from competitors in the market.  Only the owner of the federal trademark is allowed to use that mark on its products and can prevent others from using the same or similar mark on similar goods.  However, the owner of a trademark may grant other entities permission to use its mark on the grantee’s products.

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