You might think trademarks is a dry topic and left for the realm of attorneys who understand the sometimes archane laws associated with it. However, about 50 people gathered at the Network Solutions offices in Herndon, VA on Wednesday, September 17 to attend the event “Trademark 101 – A Networking Event for Designers, Developers, and other Web Professionals”. It was presented by three trademark attorneys, Brian Winterfeldt, Stacey Johnson and James Mercurio with Ballard Spahr Andrews & Ingersoll, LLP who gave a presentation that really seemed to engage the audience as well those watching the live feed on uStream.TV.  The questions came fast and furious throughout the presentation!

Here are some highlights that I took away from it that would impact small businesses:

Trademarks are an important business asset

Businesses rely on their trademarks to identify their products or services and to distinguish them from their competitors. Trademarks must be protected or they may be lost. The loss of a trademark denies consumers the opportunity to identify preferred brands and destroys the owner’s investment in its asset. Generic terms are NOT trademarkable so you should avoid them.

Do a search first. It will save you a lot of time and money in the future.

Do what is called a “Clearance Search”. First is a “knock-out” search that can get the major flags out of the way. You can do this yourself on the USPTO.gov site and it will save you money before you get a lawyer and until you get the name you can use or think you can use. Also as a part of the “knock-out” search you should also check the proposed name and the results that come up in various search engines when you search on that name.  After that is when a comprehensive search comes into play.  A comprehensive search looks at word combinations, industry use or types of otherusage. It involves lots of different databases and reduces the chances of overlooking a problematic mark that could cost you in the future. You should really look at getting a lawyer at this stage. A small amount spent now will save you potentially from spending a fortune down the road.

Someone may be using a similar mark for similar goods and services. It is important to articulate what you will use the mark for, how long it will live and its importance overall in your company.

Trademarks are just a U.S. thing

Most people when thinking of trademarks think of just their home country. Here in the United States, the process is very straightforward. Trademarks are geographic in their scope and you file under being “use-based” which is for trademarks used in interstate commence OR file with “intent-to-use” which allows time for market research, product development and regulatory clearance. The latter gives you in many instances three years to file evidence of use of the mark.

Going international is a whole different ballgame. In many places, it is the same as the United States where they look for use of the mark and may provide common law protection. Other places are a bit different where there is no use required and the “first to file”, wins. You really need a lawyer for this one and because it might require engaging firms in other countries it can get really expensive but it could be a wise investment in money if you are selling interntaionally or want to do so in the future. If yours is a global brand that is growing, you need to protect it around the world.

Just cause you filed doesn’t mean you are done

Trademarks must be protected and nurtured like any other property your business manages or owns. Proper use on all business documents, advertising, displays, packaging and labels is critical. Don’t forget to use the trademark notices on your stuff, report infringement of it to your lawyers, don’t permit modification of the mark and make sure you have a licensing agreement if someone else wants to use it.

If you want to know more…

Ballard Spahr gave a great presentation and the powerpoint has a lot more detail on specific trademarking issues and excellent examples to make their point. If you want a copy, please shoot an e-mail to Brian Winterfeldt at bjw@ballardspahr.com referencing the Trademark 101 event and Network Solutions. Plus, if you are looking for further consultation regarding a trademarking issue, Ballard Spahr is a great firm and they really know their stuff. They would love to hear from you and don’t forget to mention that you heard about this from us!  We also will likely be doing a follow-up presentation in the near-future so stay tuned.  Also thanks to Linda Larsen from our Legal Department for coordinating this event with Ballard Spahr.  If any of our readers think of other topical presentations that they think would be useful, please send us an email and we will try to set up another Networking Event!  Thanks to all that made it out.