Many companies utilize the Internet as a means for advertising or selling its products. However, it is a common misconception that your Internet presence provides your nationwide common law trademark rights. Trademark rights are acquired through actual use of a mark being used on products or in connection with services within a geographic area. The geographic area in which a common law trademark is enforceable depends on its zone of actual goodwill. This zone of goodwill is considered the area in which consumers identify your mark with your company. This zone of actual good will is made up of the zone of market penetration and zone of reputation. The zone of market penetration is the area in which consumers have actually purchased your products or utilized your services. The zone of reputation is the area where consumers have not purchased your product/services but are aware of your mark and its use in connection with your goods/services.
Registering your trademarks with the U.S. Patent & Trademark Office should be one of the first steps for all new companies (that’s of course, after conducting a comprehensive trademark search). However, allocating the necessary funds to adequately protect its trademarks may be a tricky endeavor for a new startup company. Frequently, companies with limited budgets only have enough money file a single trademark and thus, must decide whether it is best for them to file a trademark application for their business name or logo. Before making a decision, it is extremely important to consult a trademark attorney since every mark is different and requires its own legal analysis. However, there are a few general factors that should be considered in the decision-making process.
When registering a trademark, applicants are frequently instructed by the Trademark Examiner to disclaim an element of their mark in order for it to be registered on the Principal Register. In fact, the U.S. Patent & Trademark Office has reported that approximately 29% of first Office actions contain a disclaimer requirement. The trademark examiner usually requests that the applicant amend the application to include the following disclaimer:
“No claim is made to the exclusive right to use [disclaimed component] apart from the mark as shown.”