Avoiding trouble when choosing a Corporate Identity

Every company has a marketing plan.  Every company has a product to sell and every company sells their goods and services using a particular name.   Surprisingly few companies, however, consider the consequences of adopting and using the name they have chosen to identify themselves and their products before adopting the name and embarking on a marketing campaign.   Companies and individuals could save themselves the costs of removing their marketing materials from the market place, redoing their image and marketing strategy and/or payment of damages if they completed a  trademark search before building their marketing campaign.

Tradenames / Trademarks/ Service marks:

Trade names are the names by which corporations are identified.  Examples of well known corporate names are Proctor and Gamble Company, Microsoft, Inc., and Coca Cola, Inc.  Although these names may also be used to identify products, they are the terms by which the company is identified in the work place.

Trademarks are the names and/or symbols  that individuals or corporations use to distinguish their goods from those of others in the market place.  Service marks are names and/or symbols that individuals use to distinguish their services from those of other services in the marketplace.  Famous examples of trademarks are COCA COLA®, PEPSI COLA®, WINDOWS®.  Examples of famous service marks are BANK ONE®, CITIBANK® or AMERICAN®.

Tips for Searching a term:

When you believe that you have found the perfect identity for your company or product, your first step should be (before spending money on developing marketing!) to determine if anyone has already adopted the same or similar mark.  One relatively easy way to check to see if anyone is using the identical terms is to type the words in a internet search engine. Also, you can conduct a search with the Secretary of the Commonwealth and by visiting the website of the Patent and Trademark Office (www.uspto.gov).

The trick in searching a mark is to not only locate trademarks that are identical to one’s own, but to locate trademarks that are similar to one’s own trademark and where a claim of “likelihood of confusion” could arise. If another person or company has adopted and is using a trademark that is similar to your mark and is used on related goods and services, you may be prevented from using your mark because there is a likelihood that your trademark will confuse consumers as to the source of the goods and services.  In the event that your trade name or trademark cause a “likelihood of confusion” with an already existing trademark, the owner of the trade name or trademark may seek to bar your use of your mark.

Of course, the final step to assuring that you will continue to have the right to use the trade name or trademark that you have selected is to seek registration of that mark with state or federal agencies.

William O’Brien is an attorney specializing in trademark and general corporate law.  He can be reached at (508) 829 5185 or by email at william@masstechlawyer.com.