The Legal Framework for Trademark & Trade Name Selection
At The Law Offices of Joseph C. Messina, our attorneys work with you to guide you in the selection of a trade name or a trademark. This is a business decision of the business owner, but our attorneys will provide you with the legal framework so you can select the right business name and the strongest trademark for your business.Considerations For Selecting A Trade Name Or Trademark
Selecting a trade name is relatively uncomplicated. There are few restrictions. In general, as long as no one in the same market area (usually defined as in the same state in the U.S.) is using exactly the same business or corporate name, then only practicality, preference and community standards matter in the choice of a name.
Even when a company expands into another market (state, territory, country, or continent), where its corporate name, company name, or current business name may be in use by another, the company may still do business in that market under an "assumed" name or "d/b/a" (doing business as) name, as long as the registration to do business in that market correctly identifies the actual person or business entity to be known by the assumed name.
For a number of reasons, the selection of a trademark must be made with care and caution. In addition, to the special and practical concerns related to advertising and marketing, one wants to choose a Mark that is either fanciful, arbitrary, or suggestive. Choosing a strong Mark that is distinctive is critical. Moreover, a trademark owner will make a considerable investment in time and money when building a brand, and you do not want to select a Mark that infringes on a third party's senior trademark rights, is refused by the USPTO, or is impossible to police in the marketplace. We can help you understand and pursue trademark protections that will protect you from trademark infringement. We can advise you with regard to utilizing watch services. This type of service will notify a trademark owner should a potentially conflicting trademark application be filed with the USPTO or with another trademark office. A watch service provides notice at an appropriate time in the process. The trademark owner will have ample time to file a Notice of Opposition with the Trademark Trial and Appeal Board if the conflicting Mark happens to be filed in the United States, or file opposition proceedings at the appropriate trademark office in another location. This service allows trademark owners to respond quickly and timely to possible infringements. After investing your time and money in the trademark prosecution, you will want to protect your trademark from any potential infringement by using a watch service.
There are also differences between state and federal trademark laws, procedures, applications, and protections. We can advise you with regard to trademarks as well as any questions you have regarding:
- Copyright infringement and registration
- Intellectual property and trade secret concerns
- Domain name issues and rights
- International trademark applications
- How to navigate the U.S. Patent & Trademark Office and other government agencies
- Filing your Mark on the Principal Register and/or Supplemental Register
Business owners may want to consider whether they use their trade names as trademarks, and if they do, we can help you register them with the U.S. Patent and Trademark Office. Send us an e-mail or call our office at 914-381-2728 to schedule a free consultation with a New York trademark lawyer.