What is a trademark? It's a branding tool, usually your
company name and maybe a logo or tag line, that you use to promote
your services as a deck builder.
Trademarks date back to preliterate times, when they were developed
to identify the makers of objects. By the 12th century, trademarks
were used widely in Europe. The 19th century industrial
revolution saw a massive increase in trademark use as the
standardization of mass-produced goods made it necessary for
consumers to have an easy way to distinguish between
Trademarks are company assets with marketing, social, and dollar
value. Marketing value is simple to understand — a good
trademark makes it easier for consumers to remember the
company's name. Social value is less obvious. Over
time, trademarks gain value beyond identifying the source of the
services. So, assuming a business has enough market penetration, a
homeowner might brag to his neighbor, "My deck was
built by Idaho Backyard Living„¢." Another
example is the status associated with owning a Dodge®
truck or a BlackBerry® cell phone.
Finally, because of its marketing and social value, a trademark
develops dollar value. While your work truck will eventually need
replacing, and your favorite cordless drill will wear out,
trademarks are assets that appreciate over time. If you build up a
deck business that becomes successful enough to sell, its trademark
becomes part of the business's worth.
A trade name differs from a trademark. A trade name is the name
lawfully adopted and used by an organization engaged in commerce.
Trade names can be trademarked, but they are not necessarily a
trademark in themselves.
Under U.S. law, the use of a trademark in connection with the sale
of goods or services grants immediate rights of ownership of that
mark. That is, if you design a trademark and use it, it's yours,
assuming that no one else has used it first. These are common law
rights and are enforceable in court. You can sue to prevent
someone else from using your trademark.
However, the strength of a common law right can vary.
There are a few things you should do to protect those rights, or
you run the risk of losing them.
Not all trademarks are equal. The trademarks you choose will have
more value and be more easily protected if they are distinctive and
suggestive, rather than simply descriptive of your goods and
A trademark like Joe's Quality Decks, for example, describes Joe
— who apparently builds really good decks. That's probably
not going to be distinctive enough to stop Dave, two blocks over,
from calling his business Dave's Quality Decks. Something that is
suggestive of your goods or services is a stronger
mark: Backyard Spaces or Fresh Air Builders will probably be easier
to protect than Joe's Quality Decks.
When you place a trademark some-?where, say in an advertisement or
on the side of your truck, you need to claim it as a trademark.
This simply means that you need to use a small TM (for "trademark")
after the trademark. The „¢ says, "I own this
mark! Hands off!" You will sometimes see SM — service mark
— used in place of TM. It may be used when a business
provides services rather than products. Either one will do the job,
Registration Is the Best
The first step before pursuing registration of any kind is to
perform a simple trademark search. You can go online and search the
records of the U.S. Patent and Trademark Office for pending and
issued trademark registrations; you can also check state records,
the internet, and public documents like the phone book and trade
Once you are satisfied that your mark appears to be clear, the next
step is to apply for registration. There are two types of
registration to consider: state and federal.
Applying for a state trademark registration is usually
fairly simple and can be done online through the
Secretary of State's office for a modest fee. The state
will check its records to determine that there is no similar mark
that could be considered likely to confuse the public as to the
source of goods or services. If all goes well, your state
registration should issue within a few months. The rights granted
are state rights, however, and end at your state's borders. If you
are doing business in only one state, that may be enough.
We have all seen the ® symbol, which means more than the
"this is mine" statement that goes with „¢. The
® means that the mark is a federally registered
trademark. If a trademark has not been registered and maintained
with the U.S. Patent and Trademark Office, you may not use it with
the ® symbol. If you do and you get caught, you will pay
a hefty fine. The reason for this is that federally registered
trademarks have more rights than common law or state-registered
trademarks. A federal trademark registration serves as
concrete proof of rights to a trademark, and it allows for
statutory damages against someone else trying to use your
Applying for federal registration offers more protection —
but requires more effort and costs more too. A federal registration
may be sought for marks being used in interstate commerce (which is
regulated by federal law). An example of this is a deck builder who
builds decks in more than one state (as in "interstate"). Assuming
you meet this criterion, you can go ahead and apply through the
U.S. Patent and Trademark Office for a federal trademark
registration. Like state processes, the federal
registration process will include a
trademark search, performed by the
examining attorney assigned to you.
Federal searches are broader than state searches and include
trademark applications as well as registrations. If all goes well,
your mark will be published for a period of 30 days so anyone who
feels they may be harmed by the issuance of your registration can
oppose it. Assuming you overcome that hurdle, your registration
should issue within a few months.
A federal registration is powerful. Action may be brought against
an infringing party in federal court, and the registration itself
is considered prima facie (on its face) evidence of your right to
the mark. It will go a long way toward helping you prevail should
you find yourself in court.
Policing a Trademark
While trademark rights are fairly easy to obtain, they're more
difficult to hold. In legal circles, trademark rights are referred
to as negative rights. This means that what you have is not so much
the right to use a trademark, but rather the right to keep others
from using it for similar goods or services.
So, what's a deck builder to do? Nothing too difficult. Mostly you
have to be aware of what's going on in your area. If you notice
something that appears to be causing confusion between your company
and someone else's (like getting phone calls meant for a different
builder), or someone blatantly marketing themselves using your
company name or logo, you'll want to look into it.
Ignoring such misuse of your trademarks may cause you
to lose your rights to them. You have spent time and money to
create a brand to promote your services. It has value — make
sure you protect it properly.
Finally, if you have questions or need advice about trademarks,
it's best to visit a lawyer who specializes in trademarks. You can
usually find one by looking in the phone book or by calling your
local chapter of the American Bar Association.
Diana Hanson is a principal in Woodpile Construction and a
paralegal specializing in intellectual property. She is active in
the North American Deck and Railing Association.