Once you have secured a reservation for the name of your business with the Arizona Corporation Commission and determined here is no conflict with either the Arizona Secretary of State or the U. S. Patent and Trademark Office (“USPTO”), you should file a registration application with the USPTO for a national trademark. Your name is one of your most valuable business assets, so it’s worth protecting. (See our previous discussions in this series: Part I – March, 2016 Newsletter; Part II – Passion and a Business Plan; Part III – Branding Your Idea: Domain Name; Part IV – Branding Your Idea: Arizona Corporation Commission and Arizona Secretary of State)
The entrepreneur should have some basic understanding of trade names and trademarks. A trade name is the official name under which a company does business. A trademark is a word, phrase, symbol or design, or a combination of those elements, that identifies and distinguishes the source of the goods and services of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than the goods themselves.
If you claim rights to use a mark, you may use “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the USPTO. However, you may only use the federal registration symbol “®” after the USPTO has actually registered a mark (does not include the registration process).
A trademark registration at the USPTO costs $325 per class (a product or service is usually in one class, although depending upon ingredients, manufacturing or the services themselves, it may fit more than one category and thus require an additional $325 per class). The process from beginning to end usually takes ten months to a year. The first renewal is after five years ($300), followed by another before the tenth anniversary ($500). From that point, renewals are every ten years before the anniversary date.
If you have prepared or had prepared written material that will be available online through your website, you should file for a copyright. A copyright costs $35 and lasts for 70 years from the date of the death of the author. If the work was done “for hire”—in other words you hired someone to do the work for you—all of the rights for that creation must be assigned to you and your company. This is done by the parties executing a “work for hire agreement.” The copyright protection is 95 years from the first date of the publication or 120 years from the date of creation, whichever expires first. Once the copyright expires, the work belongs to the public and can be used by anyone. If you are not in a position to immediately file for an application with the USPTO, simply place a copyright notice “©” and year on the document you have created to put others on notice that the work is not in the public domain.
If you expect to grow, protecting your online and written material and your trademark through USPTO registration is essential. The benefit of registration is that it is prima facie evidence to show ownership. You cannot protect your name until you are registered with the USPTO if an infringement occurs. On the other hand, if you are properly registered and there is an infringement of your brand, you can recover up to $150,000 without proving actual damages.
These issues should be discussed with knowledgeable business counsel. If you feel comfortable, you as an entrepreneur can undertake some of the foregoing tasks with the guidance of an attorney.
You are now in a position to create a business where you are the owner of your product and service. In the next blog, we will be reviewing control of your enterprise.
Lat J. Celmins
Disclaimer: This blog is for information purposes only. Legal advice is provided only through a formal, written attorney/client agreement.