Trademarks Can Protect Your Good Name
GRUPO Montéz de Durango, a Chicago band specializing in a style of Mexican music called Duranguense, spent nine years building up its good name. But in 2005, on a tour of Mexico, five of its members ended up in jail for two months — for nothing more than using the band’s name.
Unbeknown to them, the group had run afoul of a Mexican law that grants rights to a trademarked name to whoever registers it first, whether or not that is who used it first. That right went to their previous manager, who left the group after a business dispute and secured a Mexican trademark.
Grupo Montéz had to change its name and is now known by the unwieldy Los Creadorez del Pasito Duranguense, or the Creators of the Durango Rhythm. It’s a moniker the group could have avoided if it had understood trademark law.
“We knew about trademarks,” said Armando Aguirre, the group’s bass drum player. “But we thought you just got it when you formed a partnership.”
Before the age of the Internet, worldwide travel and international chain stores, trademark registration was not a big issue for small businesses. Then, trademarking a company’s name could be ignored if you simply operated locally. In the United States, small businesses have a common-law right to use a name in their own area, assuming no one else is selling goods or services under the same name.
But cross a border or advertise a product for sale around the world on the Web, and even small entrepreneurs must think about how to protect their good business names from misuse by others.
“With the Internet, geographical trademark rights become much more important,” said Sarah Deutsch, a member of the International Trademark Association and a lawyer with Verizon Communications.
Just because the Web site that is advertising your product can be seen in Norway, however, does not mean you have to apply for a trademark there. Trademarks are needed only if you plan to sell to customers in other countries, not if you are simply letting them know you exist.
The United States Patent and Trademark Office provides services on its Web site, uspto.gov, to help small businesses learn about trademarks and to enable them to apply for one online.
Yet only a minority of small businesses understand how to trademark their names.
“People think that a Web site address is a trademark, and that a U.S. trademark covers the world,” said Lynne Beresford, commissioner of trademarks at the Patent and Trademark Office. Both notions are false.
Many people do not even know what a trademark is. “I get calls from attorneys who ask me to patent their name,” said Cheryl Hodgson, a Los Angeles lawyer whose clients include Los Creadorez.
Trademarks are issued for marks that are used to sell goods and services. A mark can be a name, logo, sound (think of the MGM lion) or even a scent.
In America, trademarks are issued only for companies that actually do, or are about to, sell something. In Europe and elsewhere, trademarks can be “parked” — registered without an immediate intent to do business.
Words that describe a product or service cannot be registered. That is why there is no brand of printer paper called Printer Paper. Arbitrary words, like Kodak, Apple and Coca-Cola, are the easiest to get approved.
A trademark is registered under one or more business classifications. To save money, you can apply for many classifications simultaneously. If you successfully register the name “Acme” for your storm-door business, that does not prevent someone else from registering “Acme” as a brand of potato chips.
Words that have long been used for products acquire their own status as famous marques. Even though Coca-Cola describes a soda, no one can receive a trademark for Coca-Cola toaster ovens.
Once a trademark is approved, the owner has the right to use the ® symbol next to the name, showing others that it is protected. The TM and SM (service mark) indicate that the user has applied for but not yet received a trademark or service mark, the term used to describe a trademark for selling a service.
Before filing, applicants should check the Patent and Trademark Office’s Web site to see if someone else has been awarded the same trademark, or one similar.
You can register a trademark yourself or have a lawyer do it for you. The lawyer can do a more thorough search, advise you on the likelihood that a name will be approved and help interpret objections that might arise.
Once an application is filed (virtually all electronically), one of 400 Patent and Trademark Office lawyers reviews it. The first action is generally taken within three months, Ms. Beresford said.
Trademark applications can be filed directly on the Patent and Trademark Office Web site for every country in the world. Applications must be filed country by country, with separate fees for each.
The one exception is a blanket application for all 27 countries of the European Union. “The downside is any one of those countries can object to your application,” Ms. Beresford said.