To determine whether a mark  is primarily merely a surname, the Patent and Trademark Office will look to the number of people who have the same surname, whether the name has any meaning other than as a surname, whether anyone associated with the applicant has the surname, the notoriety of persons with that surname, and the “look and feel” of the surname, although this last factor has become controversial. While the PTO registers some surnames, many more get rejected because of the number of people with the same surname.

As a business owner, you need to be aware that, although registration of a surname is unlikely, you should still clear your name before using it in commerce. If you wish to register your surname as a trademark, you should be prepared to spend some money to overcome the objections of the PTO.

As a business owner, you can run a pre-clearance search on your 10 chosen names and eliminate any names that conflict with your chosen name. Remember, though, that just because a name does not appear on the PTO Web site, does not mean the name is available for registration. Another person might be using the name, but has not registered it yet or perhaps they spelled the name with a slight change. For example, if you search for BUGS, you would miss every registration containing the word BUGZ. I’ve found that by conducting a pre-clearance search, you can narrow your original list of 10 names to 2 or 3. You can then submit these 2 or 3 names to your trademark attorney for full clearance.

Like Michael, I don’t know of any trademark attorney that charges $10,000.00 to clear, file, and attempt to register a mark. But the point is that $10,000.00 is cheap compared to the potential cost of procuring your own trademark without help or compared to the potential value of your brand. If your brand is eventually worth $1,000,000.00, then securing that brand for $10,000.00 seems like a good deal. And you don’t have to waste thousands of dollars in advertising materials and your time to deal with refusals. As a business owner, you should focus on making the best quality product or attaining high levels of service, not fooling around with the the Patent and Trademark Office.

I should also note that, in my experience, this situation occurs regularly and I often have to charge more to fix the problem than I would have charged if the business owner had simply come to me first.

So what is a certification mark? A certification mark is any word, name, symbol, or device, or any combination used by a person other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

The first requirement of a certification mark, then, is that the mark be a word, name, symbol, or device, or combination of those things, just like a regular trademark.

The second requirement is that the mark is used by a person other than its owner. This means that a person who uses the mark cannot be the person who certifies the goods or services of others. This makes sense because of the inherent conflicts the might occur if the same person who owns the mark and certifies others to use the mark is the same person who uses the mark. For example, if UL produced its own electrical cords, then certified itself to use the certification mark, then UL could exclude others who produce electrical cords from becoming certified and using the mark. Unlike regular trademarks, certification marks are not primarily concerned about avoiding confusion the consumer regarding the source of the goods or services. Instead, a certification mark provides information to the consumer regarding the quality, origin, material, or accuracy of the goods or services upon which the mark is placed. Because this information can be important, as in the case of UL certification, owners of certification marks will license the use of their certification mark to business owners.

As a business owner, then, you may want to see if any certification marks exist for your goods or services and decide whether the cost of certification or licensing is worth the expense. For many goods and services, obtaining the use of a certification mark can be essential.

The first option is to stop using the mark as demanded. Under federal trademark law, you may be liable for significant damages if you continue to use the mark in violation of the registered trademark owner’s rights. The trademark owner only needs to show, essentially, that he has a valid trademark and he hasn’t given you permission to use it. It’s a bit more complicated than that, but you should know that intent is not an element of trademark infringement. That means that your lack of intent to infringe the mark is irrelevant to the issue of whether or not you infringed or not. Intent only makes a difference in awarding more damages to the trademark owner. If you willfully infringe another’s trademark, then the trademark owner may be entitled to a larger damage award.

Another option is to contact the current trademark owner and ask permission to use the mark concurrently with the trademark owner. The current owner may require you to pay for a license to use the mark, but, if your business and the current owner’s business are geographically far apart, you may be able to persuade the trademark owner to concurrent use of the mark.

A third option includes filing a declaratory action in federal court. As noted in my previous post, a declaratory action does not come without risks. First, you can only file a declaratory action if the trademark owner threatens litigation and even then the court can decline to hear the matter. The advantage, though, is that you get to litigate in your home venue, which reduces your litigation costs.

What option you choose depends on your particular situation. If you receive a cease-and-desist letter, you should contact your attorney who can help you make the right business decision.

The most obvious remedy is that of damages. As a trademark owner, you may be entitled to collect money damages from those who use your mark in violation of your rights. Under the Lanham Act, trademark owners may collect actual damages, or the amount of money that they can show the infringer actually damaged the trademark owner’s business, or statutory damages. Statutory damages allow a trademark owner to recover when they have difficulty showing how much they have been actually damaged. This often occurs when infringers fail to keep records of their use of your mark.

Another powerful remedy is injunctive relief. An injunction is an order by the court that either tells someone to stop doing something or tells them to start doing something. In a trademark infringement case, the trademark owner wants the infringer to stop using the mark and asks the court to enter an order to that effect. The standard for obtaining an injunction can be difficult to meet, but, if you can meet it, then an injunction can serve to stop the infringer from further violating your rights. As part of your injunctive relief, you might also ask the court to order the freezing of the infringer’s assets or to order the seizure of the infringing materials. These remedies are not typical, but are available in certain cases.

As a business owner, then, you need to be aware of new startups or existing, related businesses who may want to use your mark for their own purposes. When that occurs, you should be aware of the remedies that you may have available under the law.

First, business owners should be aware of what marks they are actually buying. Sometimes, the seller will transfer a mark that has no relationship to the business to be sold, but the mark just happened to get listed in the schedule of assets because, well, it’s always been that way. Other times, the house mark—the main mark used by a business–gets transferred, but a subsidiary mark gets left out. To remedy this, business owners should insist on separate schedules to the sales agreement that list the intellectual properties being sold with the business.

Second, because trademarks are a bundle of rights similar to real or personal property, the marks may be encumbered by security agreements. For each trademark listed on the schedule of assets, you should clear the chain of title of each mark to ensure that the mark is free of any security interests.

Third, business owners should be sure to get an assignment of each individual mark from the seller. Trademarks are assigned to new entities all the time and the process is very simple, but, because of this, this step is often overlooked. Once the schedule of trademarks is confirmed, you should ask your trademark counsel to begin drafting assignments for each mark to be signed at the closing.

There are many other important factors for business owners to take into account when buying a business and the associated trademarks including representations and warranties, licenses, and valuation. Check with your trademark counsel early in the process to avoid headaches after closing.

That’s right: domain names can serve as trademarks and the bad faith registration or use of a domain name can be grounds for legal action. A trademark owner who believes that another registrant has registered or is using a similar domain name in bad faith has two options. The first option is to bring an action under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). When you sign up for a domain name, you agree to arbitrate any disputes regarding your domain name under the terms of the UDRP. The end result of a UDRP action may be the transfer of the domain name to the trademark owner. The second option for an aggrieved trademark owner is to bring an action in federal court under the Anti-cybersquatting Consumer Protection Act (ACPA). Under the ACPA, the trademark owner files suit in federal court and may seek transfer of the domain name at issue and damages up to $100,000.00 per domain name.

Marc Randazza analyzes several common defenses under the ACPA in this post. He also discusses the advantages to the UDRP process versus defending an ACPA claim, at least for those accused of bad faith registration or use of a domain name. Under the UDRP, the only relief available is the transfer of the domain name. Moreover, the process is conducted through an arbitrator or arbitration panel by way of pleadings only. There is no discovery or oral arguments. Conversely, in defending an ACPA action, not only are the options for relief greater (transfer of the domain name and statutory damages), but the aggrieved trademark owner gets to choose his venue. As such, you, the new business owner using your new domain name, may get haled into a far-off federal court. Defending such an action can be very expensive. In addition, an action in federal court would almost certainly require discovery, which only makes the process more expensive.

There are several other issues relating to domain names and trademark law, but they are beyond the scope of this post. Business owners need to be aware of the possibility of infringing someone else’s trademark with their domain name could subject them to legal action and choose their domain name carefully. With careful planning, however, you can avoid these situations.