Many of our start-up business clients ask whether they should spend part of their limited resources on obtaining a federal trademark.
The answer: it depends on the type of business you will have an where you plan to practice that business. Understand that trademark rights arise automatically by operation of law based on a company's use of the mark in a geographic area--registration, itself, does not create any trademark rights and, therefore, is not a prerequisite for obtaining protectable trademark rights.
There are many benefits of registration of a mark on the U.S. Patent and Trademark Office's principal register, though, not the least of which is nationwide priority over all later, conflicting marks.
Our advice, then, is that federal registration often makes sense for businesses that hope to distribute their goods or services outside of their immediate local area. Further, we recommend that our clients make that investment before they start building significant brand equity in their company or product name.
After all, no one wants to spend years establishing and growing a business, only to discover that someone else in another part of the country where you hope to expand adopted your business name and can use it to compete with you in that region.
Even if you don't--or financially can't--pursue trademark registration initially, it is an essential part of your start-up due diligence to investigate whether your proposed name or mark infringes on someone else's existing trademark.
An experienced trademark attorney can assist you in this effort and help avoid the situation where you invest resources in a brand, only to receive a trademark cease and desist letter from a party with prior and superior trademark rights in your name, requiring you to abandon the brand you have worked to establish.
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Kathleen Hart is a Georgia attorney, focusing her practice in corporate law, including intellectual property and franchise matters.
Her firm, Andersen, Tate & Carr, P.C., works with all manner of clients in business and personal matters, providing "big firm" sophistication with suburban law firm attention and service.
Copyright © 2012, Kathleen Hart & Andersen, Tate & Carr, P.C.