Few people realize that trademark protection is not limited to filing with the United States Patent and Trademark Office. Trademark protection can be filed through New York State, giving protection only within the borders of the state. State trademark filing is much less costly than Federal protection and it may be all that you need. You need to build your brand so that you stand out in the crowd.
If your business is limited to the State of New York, this type of trademark may be completely adequate for your needs. Also, remember that in doing a trademark search for Federal Protection, you also need to do a search for state trademarks in states in which you will be doing business or you may run into problems down the road.
On the other hand, if you may do business across state lines, Federal trademark protection may be the wisest choice. Federal trademark protects your mark in all states, and there are certain protocols that allow the one filing to transverse certain national boundaries. Filing with the USPTO is a more time consuming and costly process, but it is the only way to assure you can take action against anyone infringing your mark nationwide.
Do not forget the search at a state level for every state in which you intend to do business will have to be performed, not just the Federal database for Trademarks.
In determining which type of trademark serves your needs, choose counsel familiar with the trademark process at both a state and federal level to minimize your risk of infringing on state or federal marks that may stand in your way of using your mark or worse, bring on an infringement claim against you.
You may use a name of phrase that has already been trademarked, but you cannot use it for the same thing as the already registered mark or something similar enough that there is risk of confusion. For example, there are 38 different trademarks for the phrase “fairy dust,” but each is for different types of things that would not cause confusion. So it is not just the mark, but the use intended for protection of the mark that forms a vital part of the search and the decision as to what mark that should be used. Similarity of mark also includes like sounding words or phrases, not merely identical words or phrases.
Certain preclusions exist in choosing marks. For example, names are generally determined not to be acceptable trademarks, yet there are exceptions to that rule. Again, as a general rule, what the item is called in normal speech is not an acceptable trademark choice, ie. “Steak” when your product sold is beef, but it may be an appropriate mark if you sell prints of artworks where the subject matter is cows. These general rules, again, would apply to both Federal and State Marks.
If you would like to discuss your trademark needs, or trademark searches, both federal and state, please Contact Diana. If you prefer to call, 315-565-2760.