Dr. Gregory Finkelson discusses trademarks and trade names, and registration basics.
SAN FRANCISCO, CALIFORNIA, June 19, 2022 — When establishing a business, there are many administrative responsibilities to take care of relative to registration, taxation, and more. According to Dr. Gregory Finkelson, this makes it all too easy for other necessary tasks, like registering for trademarks, to take the backseat as operations begin.
However, this process is extremely important to tap into the added protections of holding a trademark as soon as possible. Finkelson said many do not understand the basics of trademark registration and the benefits it provides, so never consider it a priority until it becomes an issue.
Dr. Gregory Finkelson explains trademark basics
Trademarks and trade names are often confused, and they are not interchangeable terms. A trade name is just another way to refer to the name of a business. They can be registered with the home state of the business but are not a form of protection.
They are sometimes referred to as the “doing business as” name and are typically kept on file with the Secretary of State or a similar office at the state level to log the legal status of a sole-proprietorship, LLC, or corporation.
With a trade name, basic common-law rights are afforded to a business. When a company is the first to use a term commercially, ownership can be enforced locally or within the state, but the legal claim can be tenuous and rarely crosses state lines.
A trademark is more robust and operates at the federal level with the United States Patent and Trademark Office, or USPTO, according to Dr. Gregory Finkelson. When the mark is registered, the business receives registration in an online database, and a public notice is published spelling out ownership of the trademark.
The range of protection afforded by a trademark covers the U.S. and also makes it possible to enforce the use of the trademark relative to the import of foreign goods. For example, a foreign company could not start under the same name and import products to the U.S.
Trademarks at the federal level are also able to use the official ® for the registered trademark symbol, while products registered elsewhere can only use the trademark or service mark designations.
Getting started early
While many defer registering a trademark at the start of a business, Dr. Gregory Finkelson reports it is best to get the process rolling early as it takes time.
Applications may not be approved for months, and the process — while straightforward — can have layers depending on the type of registration. Sometimes the services of a lawyer are required, particularly when a trademark would cover goods or services provided across several classes or categories.
What is protected by a trademark?
Many popular businesses are known by both a name and a logo or other intellectual property. Dr. Gregory Finkelson advises it’s important to realize a name trademark is not an umbrella for all assets.
Instead, trademarks need to be obtained for any intellectual property unique and popular for identifying a company. The intellectual property covered by trademarks can include logs and symbols associated with the business as well as words, key phrases, slogans, and specific designs. Each requires a separate application with the USPTO.