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Avoiding Blunders in Trademark Selection…

There are many pitfalls to watch out for when considering a trademark. One is picking a mark that is too descriptive. Business people love to choose descriptive words, hoping to keep competitors away. This is a mistake. Descriptive terms cannot be trademarks, at least at the time of their first use. The strongest trademarks are either coined, fanciful words, such as KODAK or EXXON, or are arbitrary, in that they have no relationship to the product, such as CAMEL for cigarettes or APPLE for computers.

But clients often resist picking a mark which tells consumers nothing about the product itself. The solution is to pick a mark that is suggestive of the product’s attributes but does not directly describe them. COPPER TONE and PLAYBOY are good examples of suggestive trademarks. A suggestive trademark is protectable from its date of first use, and may be registered in the United States Patent and Trademark Office. A descriptive or generic term may not.

Another mistake is failing to search before using the mark. If your mark creates a "likelihood of confusion" with a mark previously used, it may be enjoined in an infringement action. It is no defense that the mark was chosen innocently. Therefore, it is foolish to go into business without a full trademark search and clearance opinion from an attorney.

The search must be a full search. Looking only at the U.S. and state trademark registers is not enough. This is because trademark rights in the United States arise from use, not registration, and the owner of an unregistered trademark may be able to enjoin your company’s use. A proper, full trademark search therefore includes trade directories, business name lists, and information databases.

Companies must also be aware that "searching" only by reserving a corporate name is not sufficient. The fact that a corporate name has been reserved or approved by a Secretary of State will not protect the company. Approval of al name for corporate registration purposes is no defense to trademark infringement.

Failure to register a mark that should be registered denies a company substantial benefits. These include nationwide protection from the time the registration issues, a presumption of validity in infringement litigation, and permission to use the "®" symbol, which lends an aura of legitimacy and strength to a trademark. Also, appearance in the Federal Register has defensive value because the mark is likelier to be seen in trademark searches, and therefore may prevent infringements before they begin. Lastly, a registration may become "incontestable" after five years, which means that the validity of the mark is immune from challenge except on a limited number of grounds.

Another common pitfall is applying to register a mark unnecessarily. Trademark rights cannot be created by registration alone. You can apply for federal registration based upon an intention to use, but no registration will issue until you provide proof that the mark is being used in bona fide interstate commerce. Therefore, it makes no sense to file an application to register unless you have some realistic expectation of using the mark in business within the foreseeable future.

Misusing trademark notices is also a mistake that should be avoided. The symbol "®" may be used only with marks that have been registered in the Unites States Patent and Trademark Office. Once the registration issues, use of the symbol is not mandatory, but it is good practice to use it to put potential infringers on notice of the company’s rights.

Finally, companies want to avoid forgetting about foreign countries. Once a company begins to think about either selling or manufacturing products in a foreign country, it should consider applying to register its trademark there.

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