Building a successful business is hard work. You need a great product or service, a marketing plan for getting the word out, skills in sales to convert your product or service into actual money, a head for numbers and finance, and innumerable leadership skills to tie it all together. Today, let’s talk about the marketing/branding piece. We’re often asked: Should my business name and brand name be the same? What is a DBA, and do I need one? And how do I file one here in Ohio? The Secretary of State doesn’t have a DBA form. And what is the difference between a trade name and a fictitious name?
In Part 1 of this series, we discussed the importance of conducting a trademark search. In Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. And in Part 3, we discussed how to register your trademarks with the USPTO. But once your trademark is registered, it’s your job to protect it and enforce your rights. To do so, you must file certain maintenance documents in a timely manner and actively police your trademark.
To recap, in Part 1 of this series, we discussed the importance of conducting a trademark search, and in Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. Assuming your trademarks aren’t confusingly similar with that of another company offering related goods or services, how do you go about actually registering your trademark with the U.S. Patent and Trademark Office (USPTO)?
In Part 1, we discussed the importance of conducting a trademark search, preferably before investing too much into a brand only to learn that your trademark cannot be registered or, worse, infringes someone else's trademark. The most common reason for the U.S. Patent and Trademark Office (USPTO) to refuse a trademark registration is because there is a "likelihood of confusion" between the mark you applied for and an already registered mark. Put simply, in order to protect consumers, two trademarks generally cannot be "confusingly similar" to one another.
The question isn't whether your trademark is identical to someone else's. The question is how similar the two trademarks in question are and whether both marks are being used for related goods and services. For example, you wouldn't be able to trademark "McDonald's Burger Joint" for obvious reasons, but you could make a good argument to trademark "McDonald's Financial Services" because burgers and financial services are not related goods or services.
What do you do when your business has valuable competitive information that you don’t want a current or former disgruntled employee to share with others? Perhaps you’ve built a valuable customer list over the years, or you have a unique way of pricing your goods or services. Maybe you’ve developed a unique software solution, or you have special deals in place with your vendors. Whatever the information is, if it has economic value precisely because it isn’t known to your competitors or the general public, then it probably qualifies as a trade secret. What should your business be doing to protect such trade secrets?