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Thu, Feb. 20

Column: Trademark protection requires some homework

Question: I have a unique business name and have developed my brand over time. I was recently told that there is another business with a similar name in another state. Can SCORE tell me what I can do to protect my name and logo?

Answer: So, you want to know how to provide legal protection for your business name, catchphrase, and/or logo design to prevent them from being duplicated or misused by competitors. There are options for Arizona businesses. The easiest and least costly is to register with the Secretary of State (azsos.gov). Or, if you are conducting national or international business, then by all means consider applying for trademark registration from the U.S. Patent and Trademark Office (USPTO).

Building a brand around both the name and mark of the business is essential for distinguishing your company from competitors; therefore, it is a sound practice to register both the name and the mark. Trade names and trademarks are defined as a word, name, symbol or device used in business to indicate a source of the goods (i.e., your business), and to distinguish those goods from those sold by another business. A service mark, closely related to a trademark, identifies and distinguishes a service rather than a product.

Although Arizona doesn't require listing your name or mark with the state, this does provide protection from in-state competitors. Also, if your business is registered with the Arizona Corporation Commission, this prevents anyone from registering an LLC, corporation or organization with the same name within Arizona.

For registering businesses providing goods or services outside Arizona, the USPTO recommends that you make sure you have a clear idea of the mark you want to register and the goods and/or services you provide. You also need to declare if you are filing based on an actual existing use of the mark or have a firm intention to use the mark in the future.

Lonnie McDowell, PLC, with offices in Prescott Valley and Cottonwood, notes, "If you decide to hire an attorney to help you, typical fees can range from a few hundred to thousands of dollars, depending on what needs to be done. In addition to attorney fees, there are costs for applying for registration. You'll need to determine which of the 45 international categories your mark fits into, and do some research to make sure no confusingly similar mark already exists."

Arizona currently charges $15 per category to register a trademark, according to McDowell. "A notarized trademark registration form and three acceptable samples of the mark are submitted with payment. Registration lasts for 10 years and can be renewed. This is usually approved within two to four weeks, but can be expedited for a processing fee.

"The USPTO currently charges a non-refundable fee of $325 to $375 per category. Only one sample of use is needed, but approval takes a minimum of 5-7 months, and frequently requires more than a year.

"Additionally," McDowell advises, "a state or federal trademark can be rejected and registration refused if it is considered scandalous, disparaging, or deceptive. Marks that are proper names, geographic names, or are 'merely descriptive' are typically rejected. Marks consisting of fanciful or made-up words (Polaroid and Xerox) are the most easily registered.

"There is also an exception called the secondary register, where you can show your use of an otherwise non-registrable name has acquired a distinctive meaning associated with your product or service for at least five years. The Armani clothing line is an example of an 'acquired distinctiveness' mark."

Sign up for a business plan workshop over five Wednesdays from Jan. 14 to Feb. 11 at Yavapai College. Cost is $90 for two people from the same business. Go to northernarizona.score.org/localworkshops, call 928-778-7438 or email scoreoffice@scorenaz.org.

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