As Financial and Family Estate and Business Planners we have many clients that have family businesses that have names and “logos” that they have worked hard to give special meaning. Established firms often regard their trademarks among their most valued assets, since they legally protect their brand name from being used by competitors.
Your role as consultants is to raise the level of awareness, so that, the client will seek protection. Our job is to provide services to secure the legal protection. We offer this Legal Brief to provide a better understanding of this area of law and protection so that you can better serve your clients.
Trademarks (TM) are essentially brand names, denoting a specific company’s product or simply the company itself. A trademark can be a word or phrase or symbol. Related to trademarks are service marks (SM), which are symbols that identify a particular service offered by a specific company.
Not to be confused with patents, trademarks do not confer legal protection on the product itself. Other companies can copy the trademarked product, simply not its name or logo. If your product is sufficiently unique, you can prevent others from copying it by seeking a patent or copyright. Family names and geographic names attached to products— Smith Shoes or California Mittens, for instance—are very difficult to trademark unless the products in question have developed a significant consumer base.
Companies seeking to trademark their products can do so at either the California state or supplemental register, for brand names federal level. State trademark registrations are relatively inexpensive, but generally do not apply beyond the state’s borders, which means that other firms outside the state of registration can use the trademarked name in their own states. Moreover, state trademark registrations usually cover only those parts of the state that comprise the registrants market at the time of registration. Other companies can apply to use the same trademark in parts of the state not covered in the initial trademark registration. Federally registered trademarks are more comprehensive, but harder to obtain.
The U.S. Patent and Trademark Office registers trademarks in two registers, the principal register denoted by the familiar “®“ symbol, for trademarks that already enjoy strong consumer recognition, and a with weaker consumer recognition. To receive federal trademark protection, the product must be sold across state lines. Applications can be made for products not currently in the marketplace, but the registration will not be granted until the trademarked product is available to consumers. Federal registration is also significantly more expensive than state registration, but the protection is nationwide. Federal trademark filings must survive the scrutiny of the Patent and Trademark Office and can take as long as 18 months from filing to granting of the registration.