WHAT’S IN A NAME?

So you’ve formed your company by filing Articles of Incorporation or Articles of Organization with the Maryland State Department of Assessments and Taxation. SDAT has determined that the name you have chosen is available.  That means that you own that name and have trademark rights in it, right?

Wrong.

All it means is that there is not another corporation or limited liability company registered in Maryland that has the same or very similar name.  It does not ensure you are not infringing on someone else’s intellectual property (trademark), nor does it provide much protection to you in such property.

Interested in trademark protection?  Registering your entity with SDAT won’t do it.

At a basic level, there are two issues you should know about when it comes to trademarks:

1.   You want to make sure you do not infringe on someone else’s intellectual property rights to the trademark; and

2.   You want to protect your intellectual property rights to the trademark.

You want to avoid spending a chunk of money to develop wide recognition of your mark, only to find that you have to stop using it because someone else had it first and took the appropriate steps to protect it.

Before you register your entity and spend considerable marketing dollars making the name a valuable asset to you, you should do a search to see if anyone is using the same or a similar name.  At the very least, this should involve internet search and a search of the U.S. Patent and Trademark Office website (www.uspto.gov).  A search firm specializing in such searches will go more in depth on this than you can, and is recommended in many situations.  Such a search will reveal whether there are existing marks which may conflict with or prevent you from registering your mark at the Federal level.

While there are various levels of trademark protection, the best protection is Federal registration of the mark on the USPTO’s principal register.  In order to obtain such registration, you must file an application with the USPTO.  You can file the application online.  However, there are numerous requirements and details matter, such as an accurate description of the goods and services covered, so you might want to consult with an attorney to help you.

Once the application is filed, expect to wait months before it is assigned to a USPTO examining agent.  The USPTO will then do its own search to see if there are any existing marks or applications which might conflict with yours.

Even if there are no conflicting marks, they will determine whether there are any other barriers to registration (for example, the mark is too generic or is merely descriptive, among other reasons).  If your application passes those tests, it will be published for opposition.  For a period of time, anyone who thinks your mark might conflict with theirs can object to your mark obtaining federal trademark registration.

If someone objects, your application may be suspended while the USPTO determines the merits of such objection.  If there are no objections, the USPTO will issue your registration, and you will receive a lovely certificate.

Important: you can put the world on notice that you claim common law trademark rights in your mark by placing a “TM” next to your mark wherever you use it.  You can use that symbol as soon as you start using the mark.  This may provide some protection, but not as much as Federal registration.

You may not use the (R) symbol next to your mark, however, unless the USPTO has granted you federal registration.

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