The function of a trademark is to associate in the mind of the purchasing public the goods and/or services provided in connection with a trademark (or service mark) with the source of those goods and/or services. For example, when you are in the market for a car, you know the difference between a Ford and a Cadillac, or between a Hyundai and a Toyota. You know what to expect from each of those brands, because you know the source.
The need to differentiate your services and “brand" is equally critical in the telecom channel. You want a brand that identifies you as the go-to company, among all the other go-to companies for what you provide. While it is tempting to brand your company with a mark that describes what you have to offer (e.g., Telecom Brokers-R-Us), those marks are the weakest and least enforceable. In fact, the U.S. Patent and Trademark Office often won’t allow you to register a descriptive mark. More importantly, descriptive marks do not — and will not — give you the distinctiveness you need to succeed in a competitive industry.
State Corporate Registration. When you’re considering a brand for your company, which may very well include your company name, you would be wise to do two things at the very start. First, perform a search of state corporate records to determine whether the name you seek is available for use in your state. Clearance of this name search means only that the state will allow you to use that name in interacting with the state; it does not mean the name is available as a trademark.
Trademark Registration. If the name is available for state corporate registration, the next step is to determine whether a name is available as a trademark. To make this determination, it is essential that you hire a capable search firm to perform a comprehensive trademark search. This search will determine whether there are any similar marks already registered, or pending applications for registration, or marks simply being used in the marketplace without registration that will interfere with your mark.
Once you understand whether your name, or a similar name is in use, as well as the market in which it is being used, with the assistance of trademark counsel you can decide whether you have rights to the name in your marketplace and thus whether you can continue to use the mark and whether someone is infringing on your rights. This decision will turn on whether your name creates “likelihood of confusion" with an existing mark that was used in commerce before your mark was used in commerce. A likelihood of confusion exists where the services or products you offer are similar and the use of your name creates confusion between your company and the other selling those similar products.
