How do I Establish and Protect a Trademark?

Trademarks are often thought of as just a logo or a name, but for a business, they’re much more valuable. A trademark is what separates (for us in Florida) Publix from Winn-Dixie. Without trademark and similar legal protections, there is little Subway can do to stop me from opening up a Subway of my own — without licensing their intellectual property or paying them a red cent. Trademarks are defined as any word, name, symbol or device or any combination thereof; as previously discussed, you can trademark sounds and even a  color. Trademarks are often the most valuable asset a business can own; they are a business’ identity, without which the public would confuse you with your competitors.

So, how do you establish a trademark?

The best trademarks are simple and straightforward. It should be easily pronounceable, short, and not tough to spell. My firm, Zies Widerman & Malek, in Melbourne, Florida, is few of these things, but, as a the saying goes, you can pick your nose, but you can’t pick your name (that’s how it goes, right?). Anyway, if you’re in the pizza business, including pizza in your name is advisable. Naming your pizza business Anthony’s Pizza, not so much.. Every town has a multitude of Anthony’s Pizzas, so why create confusion and risk a lawsuit by using a diluted trademark? Be distinctive and unique. The more likely your name is to confusion your customers, the more likely you are to get involved in a trademark infringement lawsuit. Such lawsuits are lengthy and expensive — good for lawyers, bad for you. Selecting a strong trademark that is more fanciful and arbitrary (i.e. Best Buy), rather than descriptive (i.e. Healthcare Staffing) is easier to protect.  The best trademark will be suggestive, rather than descriptive.

Next, search for your chosen name on TESS. If your name isn’t registered already, contact a trademark attorney to register it ASAP. A search report is valid only as of a given date. You can do it yourself, but as the proverb goes, a man who is his own lawyer has a fool for a client.

After registering your trademark, use it consistently and continuously. Careless use could cause the mark to fall into the public domain. It’s better to use your trademark as an adjective than a noun. “Use Aspirin medicine” is superior to “Use Aspirin”. Bayer famously lost their trademark describing acetylsalicylic acid due to such carelessness leading to genericization over time.