Make your mark ... and protect it

Shakespeare's Juliet asked Romeo to disavow his family name, arguing "What's in a name?"

Unfortunately, most businesses can't treat the matter so lightly. If you're ordered to change your business or product names under legal threat, the costs of implementing new signage, letterhead and business cards can be substantial.

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Even worse, if you lose your name recognition and customers view you as a newcomer, you'll be in little better shape than when you started your business.

It's therefore important to take early measures to protect the names of your business and products � more precisely, your service marks (the names publicly used in connection with your business) and trademarks the publicly used names of your products), often simply referred to as "marks."

Reserving your business name with the state may provide some protection for your trade name - the legal name of your business - in that others may not be able to organize their business under the same or a closely similar trade name.

However, this alone will generally not give you enforceable rights to your marks, which are the publicized names of your business or products.

Rather, if you plan to display or promote your names to customers, federal or state registration is recommended. One key advantage of federal registration is that it extends your rights to your mark nationwide, thereby protecting expansion plans.

In reality, you can begin developing enforceable trademark rights as soon as you simply begin publicly making use of a mark, so long as others are not already using any confusingly similar marks in your field.

However, your rights in an unregistered mark are limited to only those customers and territories where your mark is known. By extending your rights nationwide, you are preventing others from securing rights to your mark in other territories and "boxing you in."

Another advantage to federal registration is that it serves as certification that you own a mark and have the right to use it. This makes the mark far easier to defend against charges of trademark infringement, and/or to enforce against infringers (others who use confusingly similar marks before the same customers).

As noted above, you may have some rights to a mark even without registration, but there are many dollars worth of difference between having these rights and being able to prove them in court. Since registration serves as proof of rights, it pays for itself dozens of times over in the event of litigation.

However, since federal registration requires use of marks in interstate commerce, you may need to settle for state registration if your business doesn't extend to non-Wisconsin residents. While state registration is easier to obtain, it's limited to the state, is far weaker than federal registration, and will generally not prevail against an opponent with federal registration.

Contrary to popular belief, you cannot use the "circle-R" symbol with state registration; the law permits only federal registrants to use it. For state-registered (and even unregistered) marks, you are free to use the "TM" symbol.

Federal registration can be obtained by filing an application with the U.S. Patent and Trademark Office (USPTO), which charges fees in accordance with the range of goods/services on which you want the mark protected.

Filing is best done by an experienced trademark attorney because rights can easily be crippled (or even destroyed) by inexperienced filers. A particularly shrewd measure is to file for registration of a mark seven  to 12 months in advance of the mark's planned rollout date (when possible). This might allow you to get feedback from the USPTO regarding potential problems with the mark before you even begin using it.

Otherwise, it's useful to have trademark counsel "clear" a mark for infringement and other problems before beginning use.

Finally, while the foregoing discussion emphasized marks consisting of names, other matter can also serve as marks: logos, slogans, the overall decor or "dress" of your business, or any other matter that customers regard as being a unique "identifier" for your products and services.

Thus, you should review your business for such identifiers, and secure registration if you don't already have it. If you don't, be prepared to make changes if someone else does.