Branding and Trademarks: Factors to Consider when Starting and Growing a Small Business

Cody M. Andrushko

Product/Service name(s) and a Company name are some of the earliest considerations when developing a new innovation and/or starting a small business. However, often names are selected without consideration of the law, namely Trademark Law. Trademarks are both state and federally protected.

Table 1: Trademarks, patents, and copyrights are different types of intellectual property. The USPTO grants patents and registers trademarks. The U.S. Copyright Office at the Library of Congress registers copyrights. https://www.uspto.gov/trademarks/basics/trademark-patent-copyright.

Registration is not a requirement for protection, using a mark in commerce provides common law trademark rights; so long as, your mark can be legally protected. So why register? Common Law rights are restricted to the particular geographic area where your mark is used in commerce, to protect your mark in future markets and against competitors, registration is a smart strategy. Generally, state specific trademark registration expands your rights throughout a specific state; while federal trademark registration creates rights throughout the United States (even if you don’t operate everywhere in that state or the United States). [2]

Whether you choose to register your mark or operate in commerce under common law protection, it is good business strategy to search the market for same or similar mark(s). Generally, when done well, this will allow an individual/company avoid trademark infringement, as well as avoid competition/confusion in the market space. When searching, consider the following: (1) the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS) [federally registered and applied-for trademarks]; (2) State Trademark Databases; and (3) the internet. Due to the importance of these searches, it is often prudent to contact an attorney skilled in trademark law or a professional service skilled in this craft.

Even if a search finds same or similar marks, use of the mark does not necessarily limit an individual/company’s use, since the mark is tied to specific good(s)/service(s). One of the chief considerations when evaluating two marks against each other is to identify whether there would be consumer confusion. Trademarks represent both a good/service, as well as to a degree the quality of good/service, consumer confusion could lead to potential loss of value. A Trademark holder enforces their own rights, so trademark holders are advised to stay prudent of the market to avoid individuals infringing and potentially devaluing their mark.  

Trademarks often appear straightforward, but there are a number of factors to consider when determining whether a mark is legally protected/protectable, as such contacting a trademark attorney is advised to ensure an optimal registration/protection, as well as business plan. Consider reaching out to the SouthEast Innovation Institute (SEII), here or at admin@seii.us for further assistance with your trademark needs. In addition, the USPTO is a great resource for understanding more about Trademarks, learn more here.

[1] There are a number of considerations, restrictions, etc. with regards to choosing a mark, consider reaching out to a trademark attorney for more details.

[2] Certain restrictions can apply. Maintaining use in commerce is vital to ensure that a trademark does not become abandoned.