Business Marketing Law: Navigating Legal Strategies

Marketing your business requires more than simply hanging your shingle. You have to gain insight into your target market, come up with a compelling company name, and protect your brand, among other considerations. Below are some of the likely stopping points you will have to make along the way to marketing a business, some decisions you will have to make, and some things you may need to consider.

Thinking up a name for your company, and its product, can be more difficult than it seems. A state-wide, nation-wide, and if appropriate international search for trade names and trademarks or service marks can often relieve a headache, and potential litigation, in the future. If your proposed name or mark looks “solid,” try to reserve it with the state as soon as possible, if allowed under that state’s laws.

Most states require that any business performing transactions within its boundaries be registered with the Secretary of State. This registration generally requires submission of the official corporate name of the business, its address, the names of its officers, and the name of its agent. File the registration certificate as soon as possible after reserving your trade name.

If your business will use its trade name also as a trademark or service mark, you should consider filing that trademark and/or service mark with the U.S. Patent and Trademark Office (PTO). It may also be possible to register the mark on a state level. File an intent to use (ITU) application for registration if you wish to protect your corporate name for the services and goods you intend to use that name in connection with. Your ITU application must contain a verified statement that you have a bona fide and good-faith intention to use the mark on goods and/or services listed in commerce.

Later, you must file an Amendment to Alleged Use (AAU) or a Statement of Use (SOU) in order for the registration of the mark to be granted. The AAU or SOU must be accompanied by example products or services which verify that the mark has actually been used in interstate or foreign commerce (a company may obtain extensions up to 36 months total in which to file an SOU if good cause is shown). Rights to a trademark/service mark arise from prior usage. So, get your product out there circulating.

Remember, the names of products, the actual designs on packages, logos, or phrases used in advertising may be protected under trademark laws.
Get copyrights for your advertisements and packaging. Remember, copyright laws protect only the expression of an idea, they do not protect the idea itself. So, while they can’t prevent someone down the line from using the same general type of packaging you do, they can prevent them from using YOUR packaging. Register your advertisement or packaging with the Copyright Office. You can’t claim a valid copyright unless the Copyright Office knows about it! In other words, registration is a must to protect your interests.
Trade dress protects the shape, design, and colors of packaging for products. In order to be protected: (1) consumers must recognize the trade dress shape as identifying and distinguishing the source of the product or advertisement; (2) the trade dress must not be dictated by functional considerations; and (3) the use of the trade dress by another must confuse consumers about the source of the goods or services or the connection of the original advertiser to the copycat advertiser. Register your trade dress with the trademark office.

Prior to running an advertisement or marketing campaign, prepare your fortresses. Research whether similar products have ever run up against difficulty for false or deceptive advertising. Perform the necessary testing and research so that when you claim that you have “The Best Deal in Town,” you know that you really do. Be ready and able to substantiate your product.