When you start a new business, take the time to select a good trademark. Trademarks and service marks are the words, designs, colors, shapes, and even sounds that uniquely identify your products and services to the customers you serve.

Your company's reputation and goodwill are directly associated with your trademarks. Selecting strong, unique marks will:

1) Increase your company's visibility,
2) Discourage potential infringers
3) Add value to the bottom line.

Strong trademarks can increase a company's book value substantially.
On the other hand, the necessity of defending weak marks increases your legal fees and "blurs" your commercial identity, leaving your company with assets of dubious value.

It's a Small Planet. In an Internet-connected world, most businesses are international. The United States joined the Madrid Protocol in 2003. As a result, owners of trademarks in numerous foreign countries are allowed to extend their rights into the United States. (Likewise, American trademark owners can extend their rights into more than seventy foreign countries.) It is increasingly likely that conflicts will arise. The more unique your mark, the better chance you have to survive this global minefield.

Trademarks may well be your company's most valuable assets. The federal registration is the most cost-effective way to protect a trademark or service mark. The registration gives your company presumptive exclusive rights to use of the mark throughout the United States in connection with your product or service. The registration serves as a public notice of your rights, which typically deters all but the most determined infringers. Should an infringement occur, notice of your federal registration is frequently enough to stop it, and the burden of proof in court is significantly less.  

Another benefit of registration is that the mark can become "incontestable" after five years of registration. This means that your mark can no longer be challenged or cancelled except on very narrow grounds, such as the unlikely event that your mark becomes generic. An incontestable trademark cannot be cancelled on the grounds of prior use.

A federal registration is mission critical. The lawyers at Symbus have engaged in a number of disputes involving trademarks and service marks. In many cases, the conflict could have been avoided or minimized if the business owner had obtained a federal registration when she started up.

Here's one scenario: Mary opens a restaurant in New York. She registers her corporation with the state, but doesn't bother to register the name of the restaurant as a federal trademark. Several months later, Sue opens a restaurant with the same name in California. They co-exist peacefully for several months, during which time Mary becomes a success in New York and opens a second location. Sue decides to franchise and begins to spread across the country, eventually opening a restaurant in New Jersey. This annoys Mary, who begins to get misdirected phone calls meant for Sue.

This is usually the time we hear from Mary. She wants to know what she can do to stop Sue from using the name of "Mary's" restaurant. After all, Mary has prior rights to the name, and she wants to expand as well.

The fact is, it's going to be very tough to stop Sue. The litigation will be very costly, and the best Mary will likely be able to do is to carve up the country so that each party has rights to certain geographical areas within their zone of reputation. Mary may well have given up her right to expand beyond New York.

However, if Mary had obtained a federal registration when she opened her restaurant, she would have secured presumptive exclusive rights to use his trademark throughout the United States.  From the date of the registration, Sue would have been "cut off" from expanding further. The chances are great that Sue would never have adopted the name in the first place, since the registration would have given public notice that Mary had the rights to the name.

Bio: I have maintained an active practice in trademark and copyright law for over 25 years.

Services and Description

My partners and I left large traditional law firms to deliver services more electronically and cost-effectively.  We assist businesses (large and small) to protect and manage their trademarks, copyrights, patents, and domain names.  We offer our clients an online management system for their trademarks anywhere in the world free of charge. We do not charge for telephone calls of ten minutes or less, which encourages clients to get answers to questions that frequently arise.  There is a great deal of confusion, for example,  about exactly what trademarks cover and why they are so important. 

Contact Information

Website:  www.symbus.com
E-mail:  jbader@symbus.com
Phone:  540-825-3500