BUSINESS LAW
COVER STORY
Identifying business is important decision n today’s world, people are very brand conscious. Strolling down the aisles of your local grocery you are confronted with a multitude of choices for the same type of product. Yet, your decision as to what type of pop, soap, chips, etc. is largely made before you even arrive at that section of the store. Why? Because you already know, based on your previous experiences, what brand of pop
I
good trademark. But, you may be wondering how you go about doing it. The internet has made the searching of trademarks much easier. It is also for this reason that greater scrutiny is being paid by and to the competition. Consequently, it is critical that you conduct a search or ‘due diligence’ before you adopt and promote your new mark. You must exercise reasonable care to make sure that
Much like selecting the name of your children, how you identify your new business is one of the most important decisions you will make. Ideally, your “trademark” will serve to distinguish your goods or services from those of your competitors. This distinction, over time, will result in “goodwill” and cause your clients or customers to associate the quality of your goods or services with your name.
TROY LEONARD Trademark Attorney/Shareholder, Woods Fuller Schultz & Smith Sioux Falls, SD troy.leonard@woodsfuller.com
38 Prairie Business
(e.g. diet Coke®), soap (e.g. Dial®), chips (e.g. Ruffles®) you prefer. It is this customer preference and loyalty that constitutes the goodwill represented by a trademark, and most importantly, it’s what keeps customers coming back for more of the same. For your trademark to distinguish your goods or services from those of your competitors, it should be unique and non-descriptive. The strongest types of trademarks are those that are “fanciful”, that is those for which no dictionary definition exists. Examples would include Xerox®, Exxon®, Google®, and Verizon®. Even the use of one’s own name may not be permitted if a senior user of the same name with similar goods or services already exists. On a related note, far too often, businesses select names which are descriptive of their goods or services because they tell potential customers about that business. This practice is discouraged and unnecessary. The proper way to use and advertise your trademark is as an adjective followed by a generic term for your goods: Folgers® coffee, Doritos® corn chips, Kleenex® tissues, Papa Murphy’s® pizza, Skippy® peanut butter, or Rolex® watches. Over time, customers will associate your brand with your goods or services without reference to the latter. Best of all, they may even be willing to pay a premium because of their perception of a higher quality or value. By now, you can see the importance of selecting a
March 2011
your new mark (or one slightly different but confusingly similar) has not already been used by someone in a similar field. Once you are satisfied that your mark is not confusingly similar to another mark, you should then consider registering it with the United States Patent & Trademark Office (USPTO) or your Secretary of State. Given that most commerce today is interstate (if not international), registration at the federal level with the USPTO is recommended in most cases. PB