I just opened my business and I want to franchise in the future, an I'd like to have a trade dress for the design concept of the business. is this possible?
I am changing the Practice Area so that your question might be answered by Intellectual Property Attorneys.
The foregoing discussion does not establish an attorney-client relationship, is qualified by the limited facts presented above, and should not be relied upon as legal advice. To obtain definitive legal advice upon which one can rely necessitates retaining an attorney who is qualified in this particular area of the law.
As long as you use a trade dress that is not confusingly similar to the trade dress of another in the same chain of commerce, it is very possible. You may want to consult an IP attorney before you get started. Many of us offer free initial consultations and have clients all over the U.S.. Why not give one of us a call.
You state "I'd like to have a trade dress for the design concept of the business"
You may be mixing various terms.
You may want a trademark related to a name typically used to sell goods/services, you may want a trade dress to protect a product design or package design, you may want a copyright to protect an expression of an idea, or you may want a patent to protect an invention.
You should discuss with an intellectual property attorney in a private consultation.
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Yes, it is possible, but first you must use and promote the trade dress so that it becomes known as a source indicator of your business.
There are two issues that need to be overcome before trade dress can be protected.
The first issue is functionality. If the design serves a functional purpose, then it is not protectable as a trademark. Factors for determining whether a design is functional include:
(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
It is also possible for the appearance of a product or its packaging to be functional if that appearance is necessary in order to have some competitive advantage. This is known as aesthetic functionality.
In short, if your design provides any advantages besides distinguishing your goods in the marketplace, then it will not be protectable as trade dress.
The second issue is distinctiveness. Trade dress is never inherently distinctive, and is not protectable as a trademark until consumers come to know the trade dress as an identifier of a source of goods. This is known as acquired distinctiveness or secondary meaning. In general, five years of continuous, substantially exclusive use will be evidence of acquired distinctiveness, but this is not always the case. If not, sales revenues, advertising expenses, and other evidence may be required.
Even if registration on the Principal Register cannot be immediately obtained, registration on the Supplemental Register is advisable. Registration on the Supplemental Register requires actual use of the trade dress. While registration on the Supplemental Register does not provide a presumption of the exclusive right to use the trade dress in question, it does provide a place holder at the US Patent and Trademark Office, preventing registration of other, confusingly similar designs. Once the design has acquired distinctiveness, an application to register the mark on the Principal Register can be filed.
In the case of a product design, if the product has not been publicly disclosed, or has been publicly disclosed for less than a year, a design patent application should be considered. A design patent can provide protection for the design before the design acquires distinctiveness as trade dress. Once distinctiveness is acquired, then the trade dress can be registered.
The arguments regarding functionality and distinctiveness are not simple. You should have the assistance of an attorney.
You need to first focus on the primary standard character text trademarks and perhaps a logo / image mark if you are using one. Trade dress requires secondary meaning before if can be enforced, which is another way of saying "market recognition." I will offer some general remarks on the trademark process below, but I encourage you to get some proper advice on all this before you start spending money.
Before you invest in any trademark make sure you get some legal guidance. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the NY secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence on all the text names upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
Yes, but it really depends on what you intend to protect. Consult with an experienced Trademark Attorney who can advise you on the specifics of your business.
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