Feature:
The Trademark Mystery: What Small Business Owners Need to Know

There are several reasons why even a small company might choose to register a trademark with the United States Patent and Trademark Office (USPTO), but the single biggest value for a small business is branding protection as the company grows and becomes poised for a future sale.

While a copyright protects original works of authorship and a patent protects inventions or discoveries, a trademark is different: It protects words, phrases, logos, or designs. The trademark identifies a source of goods or services of one party and distinguishes those goods or services from goods or services owned by others.

To clarify further, a trademark may include any word or logo, or a combination thereof, used, or intended to be used, in interstate commerce. The trademark must be used to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

A service mark is any word, logo, or any combination used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. The USPTO does not distinguish between a trademark and a servicemark for purposes of the registration process.

One of the most common questions in evaluating whether a client has a trademark entitled to federal registration is whether the client’s mark is used in interstate commerce. The USPTO describes interstate commerce as “sending goods across state lines with the mark displayed on the goods or the packaging for the goods.” With services, “interstate commerce" involves “offering a service to those in another state or rendering a service which affects interstate commerce.”

If you own a business with a unique name and/or logo, and you meet the requirement of interstate commerce, you may choose to apply for federal registration for your trademark. The application process may take as little as a year and as long as several years, depending on potential conflicts, office actions issued by the USPTO, and additional filing requirements.

Unless and until such time as your trademark is registered with the USPTO, you may not use the federal registration symbol (the ®). Even if you have an application pending, the registration symbol may not be used before the mark has actually become registered. Many businesses use the symbols “TM” or “SM” (for trademark and service mark, respectively). These designations are governed by local, state, or foreign laws. These designations usually indicate that a party claims rights in the mark and are often used before a federal registration is issued. Use of a TM or a SM designation does not have any particular significance in the federal registration process, but may give rise to certain local and state laws.

Federal registration is not a requirement for use of a trademark, but it has several advantages. A federal registration gives notice to the public of your claim of ownership of the trademark. A federal registration gives a legal presumption of ownership nationwide and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. A federal registration gives you federal jurisdiction if a conflict arises. A federal registration can ultimately become a valuable branding asset, and for a relatively small investment, may become one of your largest business assets.

If your business is healthy and growing, you may wish to speak with an attorney about registering your trademark. The added value to your business as you continue to grow is well worth the modest costs of federal registration.

Barbara Ellenberg is an attorney with the law firm of Wagner, Johnston & Rosenthal, P.C. in Atlanta, Georgia, and may be contacted at (404) 261-0500 or bhe@wjrlaw.com.