• Protect Your Image
  • November 20, 2009 | Author: Maria Crimi Speth
  • Law Firm: Jaburg Wilk, P.C. - Phoenix Office
  • INTRODUCTION

         The first step toward success for most businesses is customer recognition. As business people, we work toward creating an image for our company which our customers and potential customers identify with our products or services. We strive to provide quality products or services and gain name recognition at the same time. The long-term goal is that our business name or logo is not only recognized but also equated with quality. Creating an image and consistently using it is an investment in advertising money and in time. Making that investment is wise — protecting it is essential. Failing to take steps to protect your image is risky. No one wants to be prevented from using a name after they have invested money and time in creating name recognition. And you want the power to legally prevent someone else from using a name, logo, or design, which confuses your customers into thinking another company, is yours or affiliated with yours.

    CHOOSING A NAME

         The first step in protecting your image is to choose one that is unique enough to be protected. That is especially true of your company or product name. The more unique your name, the less likely it is that someone else will use the same name. More unique names are even legally easier to protect. Courts categorize trademarks as “generic,” “descriptive,” “suggestive,” “arbitrary” or “fanciful.” A generic trademark would be a movie theater called “Movie Theater.” A fanciful mark is a coined or invented word such as Exxon or Xerox. Generic marks are not entitled to trademark protection. Descriptive marks can only be protected after substantial use. Suggestive, arbitrary, and fanciful marks are the easiest to protect. A common name can be made more unique by presenting it in an unusual way with certain colors or designs.

    SEARCHING

         Once you have chosen a name, you will want to make sure no one else is already using the same name or one that is confusingly similar. First, check the telephone book and Internet for similar names. Then call or go to the County Recorder and ask if anyone else has filed a certificate of fictitious name. Then check with the Secretary of State for trade name and/ or trademark filings. If all is clear, the final step is a search of the United States Patent & Trademark Office (“USPTO”) in Washington, D.C. You should seek the assistance of a trademark attorney or a professional search company. Most people do not realize how important a federal search is. If you use a trademark that is already registered with the USPTO or is confusingly similar to one that is, you could be sued and subject to a court order to stop using the mark and even to pay damages.

    FILING/REGISTERING

         The structure of your business will determine where you will file or register your name. Because a corporation is a separate legal entity, its name is automatically registered with the state when your corporate documents are filed. If an individual, group of individuals or corporation does business under a name other than its legal name, a certificate of fictitious name may be filed with the County Recorder. The form is simple and the filing fee is nominal. The Secretary of State also accepts certificates of trade name and trademark for registrations. These filings are also inexpensive. While a federal registration is not always necessary, it should be considered by all businesses. Without a federal registration, someone else who later registers with the USPTO can limit your right to use a trademark despite your state filings. Seek the advice and assistance of an attorney regarding registering a trademark with the USPTO.

    INFRINGEMENT

         With a few steps toward protection, you can avoid litigation or at least put yourself in the best possible legal position in the event it becomes necessary. If someone accuses you of infringing their trademark, take it seriously. Seek the advice of an attorney experienced in intellectual property. Likewise, if someone else is conducting their business in a way that causes your customers to confuse them with you, you should seek trained advice on whether they are wrongfully infringing your rights and potentially injuring your reputation and business.

    CONCLUSION

         You do not want to find your business in a situation where the name, mark or design that you spent money developing and advertising is taken away, or where your competitor is benefiting from your good reputation and advertising dollars. A successful business chooses and develops an image that is unique and identifiable and takes measures to protect that image.