Small Business: Protecting your trademark

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Trademarks, like the doors that open vertically on Trademarks, like the doors that open vertically on a Lamborghini, can be a valuable asset to businesses both large and small, provided companies know how to police them. This is a Lamborghini Venenos displayed earlier this year at an auto show in Switzerland. (March 5, 2013) Photo Credit: Bloomberg News

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Jamie Herzlich Newsday columnist Jamie Herzlich

Herzlich writes the Small Business column in Newsday.

There's a trademark on the vertically opening doors of a Lamborghini.

There's also a trademark on the rooster tail of a Yamaha WaveRunner -- that vertical spray of water coming from its back.

While these are nontraditional examples, more basic trademarks can be a valuable asset to businesses both large and small, provided companies know how to police them.

"Small businesses do a uniformly poor job at registering and protecting their trademarks," says Kenneth L. Port, a trademark expert and professor of law at William Mitchell College of Law in Saint Paul, Minn. "They really have their head in the sand."

This is shortsighted, since a trademark is one of your "most valuable assets," he says.

A trademark is any word, name, symbol or device that identifies the source or origin of a good or service, explains Port.

"A trademark is a part of a brand," adds Dennis Prahl, a partner at Ladas & Parry LLP in Manhattan, an intellectual property law firm.

It's identified by either a small TM, SM (for a service) or the ® symbol. The ® means it's federally registered with the U.S. Patent and Trademark Office and typically offers the greatest legal protection, says Prahl.

Federal registration helps

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Many companies use the TM next to their name or symbol, which indicates that they claim unregistered trademark status, but that can be more difficult to defend compared to a federally registered trademark, he notes.

There's generally a six- to 12-month period from a trademark application's filing date to getting it federally registered, so the TM could potentially serve as a deterrent while you're waiting, says Port.

But it doesn't mean someone won't lay claim to your mark, which is why you must be vigilant in protecting it.

There are trademark watch services you can hire to identify potential trademark infringements, says Prahl, noting his firm provides this service. The protection could cost a couple of hundred dollars per trademark annually, he says.

If you're doing it on your own, conduct periodic Internet searches. That's how Roberta Perry, owner of Scrubz Body Scrub Inc. in Bethpage, recently discovered that someone else was using a similar Scrubz name and logo on the Internet.

Perry, who uses a TM next to her company name, sent a letter saying she would take legal action if necessary, which resulted in the other party's altering its name somewhat.

That experience was enough to make her pursue a federally registered trademark.

"It will give us extra protection," says Perry, who hopes to obtain federal registration by fall on her company name and some of her bestsellers.

She was right in acting quickly, say experts.

Cease and desist

The first step generally is to send a "cease and desist" letter to the infringer, explains Keith Weltsch, a partner at Scully, Scott, Murphy & Presser, a Garden City-based intellectual property law firm.

Legally, it comes down to whether the infringer's mark is deemed to be "confusingly similar" to your own mark, he says.

But keep in mind if you send a cease and desist letter and the infringer doesn't stop use, defending your trademark in court can be expensive. Know your budget, advises Prahl. Weigh the seriousness of the infringement and how important the mark is to you.

To help protect it, be consistent with how you use the mark, notes Weltsch. Don't abbreviate or hyphenate and be sure to include it in all your literature and materials, he advises.

And always use it as an adjective, never a noun. For example, say "Kleenex brand tissues" rather than just Kleenex, says Prahl. If the term becomes too generic, you could lose the trademark.

"Descriptive words can't be used by one person as a trademark," he notes.

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