Most businesses benefit greatly from having a successful well established trademark. Think of it as having a good reputation. If you are a great person who is always friendly and pleasant to be around, your reputation begins acting as a trademark for your persona. The same can be said for your business. To establish a successful trademark you should consider the following characteristics:

• Distinctive - Your trademark should help make your business stand out from other businesses, particularly with businesses offering the same services as you.
• Unique - This is related to being distinctive. You do not want another company to have a similar trademark as yours. By law, “different companies can use the same trademark for different classes of goods and services;” but this wouldn’t be the wisest business decision. (Halbert, Ingulli, Ferrara, & Schiano, 2008, p. 135) You would not want to leave any chance for your potential customers to become confused over which business is which if the trademarks are similar. “For instance, hardly anyone would confuse the Ford Motor Company with Ford Models, Inc.”(Focus on Trademarks, 2008 p. 2)
• Identifiable - You will want your trademark to be instantly identifiable among your target market group. Think Coca-Cola, Nike, Adidas, etc… each of these companies have trademarks that are known at first glance.

Although this is certainly not a requirement, you may wish to make a trademark that is obvious and/or descriptive to the line of business you are in. For example, if your business was a fish supply store you may want your trademark to obviously reflect this by incorporating related terminology such as Aquatics, Aquariums, Fish, etc…

Trademark registration is not required to be protected by state common law but these common law trademarks are only protected within the state of the business or trademark. Depending on the state of the business or trademark will determine the length of the trademark protection as each state has their own time limits.

For a trademark to have the most protection it is best to register at the federal level. You do not have had to have used a trademark prior to registering it so long as no other business is currently using it. (Halbert, Ingulli, Ferrara, & Schiano, 2008, p. 137)

However, if you are not currently using the trademark at the time of registering you must show the mark being used within six months as not to be seen as abandoning the mark. This could inevitably cause you to loose ownership of your mark and in turn hurt your business if you were using this mark on a state level and registering it on a federal level. Once you have successfully registered your trademark you must file to renew it every 5 years or again you risk the chance of abandoning your mark and losing ownership.

There are many situations that would garner the PTO to deny registering a trademark. A few examples that the PTO would not allow to be registered would be:

My friends and I are starting a new design studio. We thought long and hard and finally came up with a new identity. We are now going to be called “Adobe Design Studio.” We thought this would be a cool name since, well, we all have Adobe style homes in Arizona where we spend holidays. Not to mention our favorite software suite is Adobe products. I think I’ll rush right out and register our new trademark!

Unfortunately our eager young designer would not be successful at registering his new start-up’s trademark despite what influenced his identity. Adobe is definitely registered by Adobe Systems Incorporated. The fact that our young designer’s new studio is a design studio and that Abode offers design software the PTO would not allow the youngster to register this as his trademark. “[D]ifferent companies can use the same trademark for different classes of goods and services.” (Halbert, Ingulli, Ferrara, & Schiano, 2008, p. 135) Unfortunately these two companies are too closely related for this loophole to apply.

I, along with a good friend, are teachers and we have decided to start a new design school. We have thought long and hard and decided the name and identity of our new school will be the Online Institute of Art. We know we must take care of several administration issues and legalities prior to accepting applications for admissions. I think first things first, we should register our trademark.

Our two instructors better step back a moment and rethink their new identity. I have a funny feeling the Art Institutes would object rather loudly at the new school being named the Online Institute of Art. Considering the Art Institutes have been around a hundred years or more they have a pretty well established trademark and identity that includes the Art Institute, Online Division. Therefore the PTO would not grant a trademark registration to the Online Institute of Art.

I have been supplying musical instruments to local school marching bands in and around Houston, TX for going on 5 years. I’ve been advised to turn my fun hobby into a full fledged business. I decided “why not?” so I am now creating a identity and trademark for my new business. I was thinking “Texas Instruments” as my new business name since I supply musical instruments to Texans! What do you think?

Sorry to break the news to you but Texas Instruments is already in use by an electronics company. Texas Instruments actually created the first laptop computer. I’m sure you’ve also used calculators made by Texas Instruments at some point throughout your educational career. Considering that Texas Instruments is a very old and well known company I do not think the PTO will register your trademark.

Citations

Art Institute of Pittsburgh, Online Division, (2008). Focus on Trademarks: The Designer’s Ethical Responsibility. Retrieved from the Art Institute of Pittsburgh Online Division on July 29, 2008 at http://myeclassonline.com

Halbert, T., Ingulli, E., Ferrara, G., & Schiano, W. (2008). Media law and ethics: IMD241. Mason, OH: Thomson.