1. What is a trademark?  

Simply put, a trademark is a brand for your goods or services.  According to the United States Patent and Trademark Office (USPTO), it can be a word, phrase, symbol, design or combination of any or all of these. It can also be a color (like UPS’s brown), sound (as in MGM’s roar), or smell.     
 
The idea behind a trademark is to identify the source of your goods or services and distinguish them from those of your competitors. It is intricately linked to the goodwill of your business. If properly marketed, developed and protected, your trademark could very well turn out to be the most valuable asset of your business, as the CEO of Coca-Cola has said. 
 

2. Do I have to register my mark?   

No, but . . . 
 
Granted, in the United States, your trademark rights arise from “common law” and using your mark in commerce. However, these “common law” rights are limited, usually to the local area where you have done business.
 
Resting on “common law” rights without any registration also makes it difficult for others to know of your rights and makes it more difficult for you to enforce them.  This brings me to my next point.
 

3.  Why should I register my mark?  

By registering your mark, whether it be with a well-known database like that of the USPTO or the North Carolina Secretary of State’s office (NCSOS), you give notice to the public of your exclusive rights to the mark. 
 
Registration creates legal presumptions that you are the owner of the mark as of the application date. Plus, once registered with the USPTO, you get to use the coveted “®” symbol.  
 

4.  Mark it before you market!    

Before you spend big money on marketing your business, doesn’t it make sense to make sure the mark you want to use is yours? It’s what we in the business call a clearance search. If not, you might find yourself in a trademark infringement lawsuit, having to trash your inventory, or even having to pay monetary damages. 
 
Also, not all marks are federally registrable and legally protectable. The most common reason the USPTO refuses an application is because of the mark’s “likelihood of confusion” with another registered mark. This typically arises because the marks are similar and the goods or services of the parties are related.
What counts as similar may not be as obvious as you think.  Many of my clients have no clue that similar sounding names (like “Loggerhead” and “Lagerheads”) would likely trigger refusal by the USPTO. 
 

5.  Get legal help  

The attorneys at Rountree Losee can help you conduct a trademark clearance search before you decide upon a brand for your business.  While the USPTO has a host of resources to help you learn the trademarking ropes, they cannot tell you if your mark is eligible for registration before you file, and they cannot give you legal advice.

Geoff Losee can be reached by visiting www.rountreelosee.com, by email at [email protected] or by calling (910) 763-3404. Rountree Losee LLP has provided a full range of legal services to individuals, families and businesses in North Carolina for over 110 years. As well-recognized leaders in each of the areas in which they practice, the attorneys of Rountree Losee provide clients a wealth of knowledge and experience. In their commitment to provide the highest quality legal service, they handle a wide range of legal issues with creativity, sensitivity and foresight.