"My Mandeville small business doesn't need to trademark our company name. That's for big companies."
Hold on there for a second, Debbie Downer. How do you think "big companies" begin? They just magically start up overnight with immediate name recognition and capital? (cue a loud buzzer sound here) WRONG! They start as a small business. A little guy. Well, we are excluding the already super rich and famous from this. Let's be real: the super rich and famous ain't reading a Louisiana trademark lawyer's blog. Their lawyers and assistants are (ay ohhhh!)
I get a lot of requests for help with trademarks so I thought I'd lay it all out on the table for those on the fence because it is more affordable, achievable, and worth your salt to have your intellectual property protected.
(slowly raises hand) "Amber, what's intellectual property?" Don't worry, baby bird, I'm about to tell you. Put your feet up and be prepared to be wowed.
Intellectual property is nerd talk for "things you created from your mind." Slow down, Dr. Strange. That's not all. In order to be eligible to be protected, you have to be using those creations in commerce meaning you sell it. The public knows you're out there with it.
There are a few different categories of intellectual property, or as Cousin Greg from Succession says "IP", that can be protected.
We are using "trademark" to include the following three categories, even though they are different, but for this blog it helps to just use "trademark" so yall's heads aren't spinning like Beetlejuice when he meets Adam and Barbara.
Tradename: The official name under which a company does business. It is also known as a “doing business as” name, assumed name, or fictitious name. A trade name does not afford any brand name protection or provide you with unlimited rights for the use of that name. However, registering a trade name is an important step if you choose to name your business as anything other than your own personal name (i.e., a “trade name”), then you’ll need to register it with the appropriate authority as a “doing business as”(DBA) name.
Trademark (“The Brand Name”)”: used to protect your brand name and can also be associated with your trade name. A trademark can also protect symbols, logos and slogans. Guarantees exclusive use, establishes legally that your mark is not already being used, and provides government protection from any liability or infringement issues that may arise.
Service mark: everything under Trademark applies BUT rather than a good, you are registering the SERVICE.
You can't register generic words like “Dog” or "Jean". Common, general words by themselves. Why? It doesn’t identify anything. It doesn’t make your mark special and worth registering. Descriptive words are generally are not registrable without showing that the mark has, through long use, become a source identifier. Example” “Creamy dairy yogurt”.
You can register suggestive marks (like “Quick N Neat” for pie crust), fanciful marks (made up words no one has used before), and arbitrary marks (actual words with real meanings but they aren't associated with each other like "Apple" for computers).
Most folks will go to their secretary of state to start their business and if their business name is available, then their search is over. That's their business name. Federal marks and other states be darned. Conversely they may do an exact search on the USPTO TESS search and if their proposed name or slogan doesn't appear then they think they are in the clear.
(loud Buzzer sound) WRONG.
We cannot emphasis enough the value of having someone perform a preliminary search for you to make sure another person or organization isn’t already using the name or slogan you want to use. If you are using a design, whoa nelly, you need legal help. That means we are looking everywhere online, in state and federal databases, and even internationally because there's a thing called the MADRID PROTOCOL. Oh yea- international companies can register their marks too.
There is nothing worse than having to rebrand especially after you've paid for a website design, federal trademark application fees (which are nonrefundable), graphic designs, and products. Rather than get into that bind, hire a lawyer to do all of that for you. I used a lawyer of my own to do it for my other businesses even though I do this routinely because I'm too emotionally invested in it. You need an unbiased person digging in the dirt for you.
Just because someone is using the same name does not automatically preclude you from being able to trademark it yourself.
The USPTO is looking at a few things in their analysis to approve your application:
NOTE: two identical marks can co-exist, so long as the goods and services are unrelated
If approved and granted your mark will be recognized nationally, you have the option to register it at the US Customs to stop international product/service being sold here with the same name, you can sue in federal court, you get to use the ®.
A quick Google search, not to be confused with a law degree and experience, tells you you can register your mark in your state. It's cheaper than doing it federally so it must be better right? (cue the loud buzzer again) WRONG. Registering your trademark in just your state only protects you in that state. That means if you register "HAMLINDIGO BLUE JEANS" in Louisiana, you can only enforce that mark in Louisiana. If someone else is selling "HAMLINDIGO BLUE JEANS" in Mississippi you can't enforce your mark there because, no offense, Mississippi doesn't care about your mark. Having a mark registered in one state only allows you to file an injunction (a court forces the person to stop using the mark) or send a cease and desist in that state.
Having a state mark also doesn't give you superior rights to someone with a federal mark. If you registered "HAMLINDIGO BLUE JEANS" in Louisiana on May 1, 2022 but there's a federal mark for "HAMLINDIGO BLUE JEANS" then guess what? The owner of that federal mark is going to send you a nice little letter to stop using their mark . If you don't then they will file an injunction against you.
When you file your federal application know that if your application is denied, your application fee is NOT RETURNED! You will also need to know the classes of the goods or services your mark will fall under. That's why having a lawyer handle it for you is important.
BEWARE: if you use a third party company to handle this for you and the person handling it IS NOT A LAWYER, then if your application is denied and you want to appeal it, that company CANNOT appear on your behalf.
I hear this a lot and honestly, it is not true. There's so much more that goes into the analysis. Let's imagine this scenario: you've been using "HAMLINDGO BLUE JEANS" in Slidell for years. You're selling those jeans at festivals. You don't have a website. You don't have internet presence except for maybe a few Facebook posts here and there. If anyone else were to search "HAMLINDIGO BLUE JEANS" nationally, using Google, you would not pop up. Sure you've been using the name longer than they have but when push comes to shove Federal Mark Examiners (and potentially Courts) are going to look for your visibility and the potential penetration into your market. If it's not there, then you may be out of luck "protecting your common law right". You also can't enforce your mark as well when it isn't registered. Let's say you mail a cease and desist letter to someone. They will likely crumple it up and laugh at you when your mark isn't listed on the US Registry. Then they file an application. Now what?
Aside from protecting knock offs from occurring, registered trademarks show others you are serious about your brand and intellectual property. I've had clients use the registration of a mark to help convince financial institutions, investors, or potential partners to take a chance on them. If you have plans to expand your business, you need a trademark. If you want to one day franchise your business, you need a trademark.
Once you get your registration your job isn't done. You need to continue to police the use of your mark. Failure to police that mark means your mark could be denied when it's time to renew it.
We offer trademark searching and analysis of the success of your federal application before you apply. We can't guarantee success but we can try to save you the headache and cash you'd expend if you decided you wanted to do the application yourself. Of course we also offer trademark application and appeals work.
Want to get started with a paid business consultation with Amber & Tubbs? You can shoot us an email to start a conversation or reach out to our Assistant Brielle via phone or text at 985-265-7069 to schedule or get pricing information.
Please note that this entire article, as everything else on this Sheppard Law website, is the intellectual property of Amber Sheppard and Sheppard Law and should not be reproduced in any fashion without explicit written permission.