Whether you’ve just started a new business, or have been in business in New York for years, you’ll want to protect your ability to operate under your business name and logo by getting a trademark.
McCabe & Mack LLP associate Joanna M. Longcore explains how consulting with an experienced attorney before filing your trademark application can save you time and money while preserving your rights.
A. The U.S. Patent and Trademark Office (USPTO) defines a trademark as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include brand names, slogans, and logos. The term ‘trademark’ is often used in a general sense to refer to both trademarks and service marks.“
A trademark would apply to a brand name, a business or product logo, or a slogan. The point is to protect the quality and integrity of your business or product to ensure that others selling something similar cannot piggyback off your brand’s name and reputation.
A. I get a lot of calls from people asking me to trademark a name or phrase that is too generic or descriptive, meaning the name could easily apply to many businesses. For instance, you couldn’t get a trademark for a company named “Best Computers”. And if you’re a farmer selling apples, you would not be able to trademark the name “Apple”. However, the Apple computer company was able to trademark the name “Apple” because the name is arbitrary in the context of the computer hardware market.
Trademark laws walk a fine balance between preventing consumer confusion and allowing for a robust marketplace. The laws prevent one company from trademarking all the descriptive and generic words related to a specific field to prohibit competitors in the same market from using those words.
Names that evoke or hint at the nature of the business work well for trademarks, such as Greyhound, which suggests speedy travel for a bus company, or Vogue, which suggests popularity and style for a fashion magazine. You can also trademark arbitrary names, such as Apple for computers, or fanciful or invented names, like Kodak for film.
Strangely enough, it is possible to lose your trademark rights should your product name become so ubiquitous in modern culture and nomenclature that the product name supplants the functional name. This happened with Kleenex (tissues) and Velcro (hook and loop fastener).
A. With so many people starting businesses now during the pandemic, it is in your best interests to research and find a few unique potential business names first — before you begin operating under that name, file for incorporation, develop your branding and social media following, design a website, purchase signs, and develop marketing materials. You don’t want the expense and headache of receiving a surprise “cease and desist” letter in your mailbox after you have worked so hard to build your brand and your business.
So where to start? Try exploring names for your company that are either suggestive of your business (like Greyhound for travel), arbitrary (like Apple for a computer business), or made-up (like Kodak for film). Remember that you can always describe your business in a tagline or subtitle if necessary. While you’re in the research phase, begin preparing a list of potential business names by searching these key resources:
A. You have 18 months starting from the time that you file your trademark application until you must prove that you are actively using your business name in connection with the goods and services under the business name with which you have applied. You don’t want to apply for a trademark too early if you won’t be fully in business within 18 months. But otherwise, you can begin the trademark process of your business name once you have a concrete idea of your business, and you’re filing your Articles of Incorporation.
Your logo is a separate trademark from your business name. And, while you cannot trademark a generic name, you may be allowed to trademark a stylized design of specific words or a tagline within a logo. One example that comes to mind is Rice-A-Roni: The San Francisco Treat, where “The San Francisco Treat” is too generic to be trademarked on its own, but allowable when combined into the design of the logo.
Your trademark will need to be renewed every 10 years, as long as you can show that you are using it in business.
I always recommend working with an experienced attorney from the outset, that way you can incorporate and apply for your trademark at the same time. At McCabe & Mack LLP, we can help you with this.
If you have questions about getting a trademark, please feel free to reach out to me personally at 845-486-6891 or by email.
Joanna M. Longcore, an associate with McCabe & Mack LLP, is a graduate of SUNY Geneseo and Cornell Law School who specializes in insurance defense, civil rights, employment discrimination, and police liability litigation. She was admitted to the Illinois Bar in 2008, and the New York Bar in 2010.