Once you have formed and organized your new technology company, one of your first tasks should be to secure your commercial rights to the company’s business and essential brand names, logos and domain names while the business is still in the conceptual stage. When your company is new, and yet to demonstrate it has any market value, no one care about your names, brands and logos. Once your company demonstrates in an actual marketplace that its goods or services have value, everyone will be interested in your names, brands and logos, and not necessarily for altruistic reasons.
Secure the Names You Need to Successfully Execute Your Business Plan
It’s important to immediately take steps to secure your company’s legal rights in the names of its business, brands and logos while the company is still in its infancy. Some of these rights are defined and governed by U.S. trademark law. Other of these rights are defined by the Internet Corporation for Assigned Names and Numbers (“ICANN”) which regulates access to the Internet in several ways, including by the registration and use of domain names.
Trademarks are often one of your business’ most valuable assets, and a strong trademark can be a key to your success. A trademark, or brand, can be any word, phrase, symbol, design, or other device, alone or in combination, used to identify the source or origin of goods or services.
Trademark owners have the exclusive right – within certain limitations – to use a trademark in connection with the products or services covered by the mark. This allows trademarks to distinguish a product or service as originating from a single source, which serves the dual purposes of consumer protection and property protection.
The most common method of securing strong trademark rights in an age where every business may have a global presence by virtue of the Internet is by federal registration of your company’s marks through the U.S. Trademark Office. Many foreign countries offer similar legal protections for trademarks, and certain international treaties can expedite registration in multiple jurisdictions if the countries are parties to the treaty.
Trademarks allow consumers to distinguish a business’ products and services from those of its competitors by identifying a product with a single source. While consumers may not necessarily know the identity of the source, they can rely on the mark for goods or services of a consistent quality. Consumers may identify a trademark with the specific characteristics of existing products. The trademark also may signify more general attributes of the goods or services, such as price, value, quality or status.
A domain name is a form of electronic address for a website. Domain names are valuable commodities, with the most sought-after names changing hands for large sums of money. It’s quite common nowadays for any business to have a website presence and it is important to ensure that a business has the right to use a domain name (or names) that reflects its business and attracts customers. A domain name can be registered directly with an accredited registrar or via a registration service that handles domain name registration for a small fee. ICANN has accredited well over 1,000 other companies who register domain names and who have access to the shared registration system. Different registrars all have their own policies and procedures for registering and maintaining domain names and handling disputes. They can vary widely so it’s important to understand how your registrar conducts business and renews domain names.
Maintain and Enforce Your Marks to Protect and Grow Your Business’ Value
Once you’ve secured your trademarks, it’s important to protect your company’s right to use the trade designations when and where the company wants to sell its products or services, and prevent other people or entities with a similar business concept from using them. The Trademark Office can cancel a registration if the owner fails to make the required filings. Any interested person can petition to have a trademark canceled based on one of several grounds, including generic and abandonment.
To maintain the registration of your company’s federal trademark you must periodically file declarations of continued use and renewal applications with the Trademark Office, and pay the appropriate filing fees. It’s also good practice to file an affidavit of incontestability with the Office once your mark has been in continuous use in interstate commerce for at least 5 years after registration. Among other things, securing incontestability will prevent third parties from challenging ownership of your mark.
To maintain your domain name you must renew it before the end of its current term, which could be anywhere from one to ten years. If you fail to renew your domain name in a timely manner, most registrars will provide you with a notice and a grace period to do so. But there is no uniform policy for handling expired domain names because there is no single registrar charged with that authority. Each registrar has its renewal procedures so it’s important to know the terms of your registration and when you must renew because if you lose your domain name it could be expensive to recover it.
The ability to exclude others from using the same or confusingly similar marks assures trademark owners that only they receive the benefits of investing in a brand. The benefits of a strong mark can include consumer loyalty, goodwill, and marketing efficiencies in multiple markets that results from stronger brand recognition. Similarly, the ability to register your domain name – or names – for an extended term assures that your company will be found on the Internet, its goods and/or services will be well known and regarded, your customers will able to find your company and transact business, and your company will receive the benefits of investing in its array of brands.
Always Try to Plan for Future Growth with Your Marks and Names
You should actively plan for your company’s growth and success by taking the initiative and filing for trademark rights protection in the United States and all foreign jurisdictions where you reasonably expect to conducts business in the future. Technology startup companies, which typically aspire to develop national or international brands and customers, should do the following early in the company’s tenure:
1. Make a list of jurisdictions where your company plans to operate and decide where you can afford to file for the necessary trademarks and domain names.
2. Take advantage of the intent-to-use method of applying for a U.S. trademark registration. It allows your company to register a trademark before actually using it in interstate commerce if the company has a genuine intent to use the mark in connection with the goods or services listed in the company’s trademark application. It will help your company get a jump on the competition.
3. Register your domain name for the longest period of time possible. One major registrar offers a service that will continue to renew your domain names automatically for a period of 100 years. That should eliminate the risk of cybersquatting and allow you to sleep better at night.
4. Keep in mind that the world generally works on a first to file basis. It’s common practice in some areas of the world for third parties to register the trademarks of growing companies to extort cash from those companies by selling the rights to these registered trademarks back to them. Another good reason to research and register your marks and names early in all jurisdictions where you contemplate doing business.
If you have any questions about securing the trademarks or domain names for your new business venture, please contact us at www.finkellawgroup.com.
Finkel Law Group, with offices in San Francisco and Oakland, has more than 25 years of experience helping our clients navigate registration of their trademarks through the U.S. Trademark Office, licensing those trademarks for commercial gain, and enforcing trademark rights in administrative proceedings before the TTAB and in federal court. We have done the same for our client’s domain names too. When you need intelligent, insightful, conscientious and cost-effective legal counsel to assist you in understanding new laws that may affect your company’s intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or info@finkellawgroup.com to speak with one of our attorneys about your matter.