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Small Business Legal Playbook|Play #10: “The Trademark”

Welcome back to another week of the Small Business Legal Playbook! Play 10 is titled “The Trademark.” A lot of great ideas for prospective businesses come through my door, and many of them base their first business plans on a trademark. Securing that trademark is considered one of the first steps to success. Of the steps to success, the trademark application is one of the most confusing issues for a small business owner.

How can I trademark my name? Is my name already trademarked? Is my idea too close to an existing trademark? Can I trademark my name, is it trademarkable? Is there value in trademarking my name?

We’ve spoken in weeks past, in previous Plays about several different topics. This week, we’ll discuss an issue with intellectual property that many of my clients have faced.

So how do you make sure that a trademark is right for your small business? First, I must give you the disclaimer that only you will truly understand the value of the specific potential trademark to your business. I can help you decide whether a trademark application will be likely to be approved, but I can’t decide how valuable it is.

The purpose of this week’s Play is to talk about your trademark application’s viability, and what you should be asking your trademark attorney.

First, you should ask your attorney if you can trademark your trademark idea. There are a wide variety of reasons why something isn’t trademarkable, one example is you want to trademark something widespread and generic. It might sound obvious, but Sony (yes THAT Sony) tried to trademark “Let’s Play” earlier this year so if a large multi-national company like Sony tries to trademark something obvious, maybe it’s not that obvious.

Second, you should ask your attorney if your name is already trademarked, or if your trademark will be deemed to be too similar to an existing trademark. Some prospective clients want to trademark a name where they’d simply put a number in place of letters and hope the examining attorney at the USPTO will miss it. They won’t. It’s a waste of your money to try it, because even if it goes through, if the original trademark holder finds it, they’ll oppose it.

Third, you want to make sure the trademark has value to your business. If for example, someone is using the name you want to trademark, it’s not going to be a magic spell that will prevent them from using the name going forward. Don’t register a trademark for the purpose of stopping someone from using the name you wish to trademark if they’ve been using it before you’ve filed the trademark. In America, registering a trademark with the United States Patent and Trademark Office (the “USPTO”) is a more of a formality, but the rights to use it are based on priority of use of the mark in the territory. A trademark you can’t enforce is a trademark you can’t be spending precious resources on only to watch others use it without an ability to stop them.

That’s all for this week. I hope you enjoyed this week’s Play, and stay tuned for next week’s play from the Small Business Legal Playbook! Remember to subscribe and get each play sent to you directly! Until then, may your businesses continue to thrive and your football teams be victorious. Keep playing to win!

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