Vermont Intellectual Property Lawyers

TRADEMARK FAQ’s

Q: I registered my business with the Vermont Secretary of State. My name is legally protected, isn’t it?

A: Unfortunately, no. Unlike motor vehicle registries, the purpose of the Secretary of State’s registry is not to determine the “title” to a business name. Instead, this registry provides the public with a directory of the names of the people behind a given business name. Ownership of the name, if it is not also registered as a federal trademark, is determined by the facts of each case. Usually (not always) the first person to use a name in business has ownership of the name, but only within his/her market. On occasion, the Secretary of State will even allow more than one business to register a given name. (There are, for example, two registered “Land-Air” businesses in Vermont.)

Q: I registered an Internet domain name that contains my brand name. My brand is now legally protected, isn’t it?

A: Again, unfortunately, it is not. The Internet domain-name registrars will check an application for conflict with existing domain names. Sometimes this process alerts a new business that another similarly-named brand already exists. The registrars don’t check for conflicts in the U.S. Patent and Trademark Office’s records, however. Therefore, they will not necessarily discover the conflict or reject the domain name, even if the name is in use by another business. Only an examination of the Patent and Trademark Office’s records can unearth existing federal-trademark owners who have prior rights to the name. Under federal law, a person who registers a domain name that contains the registered trademark of someone else must give up the domain name.

Q: I did a search of the Internet using multiple search engines, to see if my brand name was available. I got no hits, so it’s safe for me to use the name, isn’t it?

A: An Internet search is one step in “clearing” a name for use in a new business, but it is not enough by itself. It is necessary also to search the U.S. Patent and Trademark Office’s records to see if there is a registration there that does not show up on the ’Net.

Q: My business will be strictly local: one brick-and-mortar retail store or restaurant. I don’t need a Federal trademark registration, do I?

A: You may not, but think ahead. Will your business ever have a Website? If so, it will instantly acquire a worldwide Internet presence, despite its local nature. If your brand name is original and attractive, someone else may either already have thought of it, or may copy it from you once you go “live.” Even if the other business is local to some distant state, its owner may register the name with Patent and Trademark, and then attempt to take the name away from you. If you have not registered, you may lose the name entirely, or at best be unable ever to expand.

Q: When should I involve a trademark lawyer in the naming process?

A: Before you spend money on labels, prepaid directory entries, signs or other promotional items. A trademark lawyer can help you steer clear of a name that you will eventually have to change anyway. While it can be disappointing to learn that your proposed name won’t work legally, it is better to find this out before spending money on it that cannot be recovered. A trademark lawyer also can help you craft advertising that will establish your name as a trademark. Merely using your brand name as the name of your business entity is not enough to establish your rights to a trademark registration.

If you have any questions, please contact Doug at 802-864-5756 or by accessing his contact information on the right.

The materials provided on this website are designed for general informational purposes only, and should not be relied or acted upon without first consulting a lawyer. The information provided on this website is not necessarily updated on a regular basis, and may not reflect recent changes in the law.

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