MAKING YOUR MARK: Choosing & Protecting Your Bank’s Trademark

Photo of Kara SemmlerA good trademark can send a message about your company, products or services and is a way to obtain and keep the consumer’s attention. 

Before personal devices and Facebook, trademarks were used to distinguish products. Today, trademarks continue to distinguish products but also serve as an effective communication tool to reach an audience who expects to receive information quickly and efficiently.

“For bankers, your company name is unique to your business, and you consider it your ‘brand.’ It is this brand name that customers type into a search engine or social media platform to look for you,” said Kara Semmler, an attorney with May Adam in Pierre. “You want consumers to find you and not your competition, therefore it is important to protect that brand.”

The importance of trademarking a bank’s intellectual properties was a topic of discussion at a recent meeting of banking association lawyers, according to SDBA Legal Counsel Brett Koenecke with May Adam. Semmler handles trademark registration at both the state and federal levels at May Adam.

“Trademarks are evolving in this contemporary, personal device day and age where we expect to receive information quickly, and we make decisions quickly,” Semmler said. “A strong trademark can grab the attention of the consumer, perspective employees or whoever you’re trying to reach.”

Choosing the Right Mark
For banks, the main trademark concern is protecting the name and logo. The two most important factors in choosing a trademark, Semmler said, is that the mark be distinctive and sets the appropriate tone for your company or product.

The legal test for a trademark is the “likelihood of confusion.” Is the proposed mark so close to an existing mark that it is likely to confuse consumers as to the source of the goods or service?

Trademarks gain strength the longer they are used and the more effort you put toward protecting them, said Semmler. If others use the same mark or a “confusingly similar mark,” the value of the trademark is diluted in both a legal sense and as a communication tool.

Having represented clients that had to defend themselves against trademark infringement claims, Semmler understands that it can happen very accidentally and innocently.

“So before you invest a whole lot of money, time or energy into a name, mark, product or a claimed phrase, just pause to think where that idea came from,” Semmler said.

Hiring marketing professionals and a lawyer could be good money spent upfront so you don’t waste time and energy on a trademark that you cannot use.

Protecting Your Trademark
The minute you start using your mark in commerce, as long as you are using it correctly, you create trademark rights. But, if the use of your mark is specific to your local community or part of the state, then others in and outside of your state may not know of your mark, Semmler said.

It is possible that another person could innocently infringe upon your trademark rights. If you do not know they are doing it, you have no way of protecting your mark, and your trademark rights could become diluted.

Registering the mark is a way to give others legal notice of that mark. Once a mark is registered, no one else can claim that they were innocently using the same or deceptively similar name or mark.

Semmler said if a business is localized and doesn’t plan to expand to a nearby community, it might not be necessary to trademark the business name or logo. But if there is any idea of growing to a neighboring community, statewide or beyond, it is important to register your trademark.

Protecting a trademark is not only a concern of a bank but also any business to which the bank is loaning money.

“Trademarks can be a valuable asset. A business’ value can be impacted by the customers’ recognition of a brand or service offering,” Semmler said.

Registering a Mark
Registration means you are putting the state in the case of state registration or the nation in the case of federal registration on notice that a mark or name is being used. Marks can be registered statewide with the South Dakota Secretary of State or federally with the U.S. Patent and Trademark Office.

“The major first step is assuring that your mark is in fact unique—that there is not someone else out there using it,” Semmler said. “From there, if you have a unique mark, the rest is just paperwork.”

A business name can be registered as a trademark, as well as a logo. Semmler said whether or not you need to trademark both depends on the particular mark and business name.

“It really depends on how you use the trademark and who you are trying to reach with the trademark,” said Semmler. “Usually with those that I have done, the client has registered the name of its business and its logo separate because they want to protect the shape, color and the look of its logo along with name of its company.”

In addition to deciding on color, font type and other stylistic preferences, the business needs to demonstrate that the mark is being used in commerce. Semmler said the business needs to show that the mark is being used on a website, mailing materials or other paper or Web-based documents outside of the organization.

“You have to show that the logo is being used in commerce, and you have to have proof that consumers outside of your own organization are receiving it,” she explained. “If you are attending trade shows, for example, an actual photograph of your booth with the logo or actual photograph of the handouts sitting on the table. Just creating the handouts and written materials themselves isn’t sufficient because that alone doesn’t prove that the mark is used in commerce.”

State Versus Federal Registration
When registering a mark, there are technical requirements necessary to get that mark registered, to preserve the mark and prevent it from being diluted.

Registering with the state, Semmler said, is something you could do on your own. The necessary forms and help is available from the South Dakota Secretary of State’s Office. But, she cautioned that you sufficiently search for other similar marks. The U.S. Patent and Trademark Office publishes all marks in a database searchable by color, design, word or shape. You can utilize the federal database even if you are only registering the mark in state.

“For any business owner, it is interesting to see who else in the United States is using a similar word, name or trademark and has taken the time to register it,” Semmler said. “Even if your company name is different, if the logo itself visually looks like another company’s, it could still be considered confusingly similar.”

If you have plans to expand past the state’s borders or if you use the Internet for your business, Semmler suggested registering your trademark nationally.

“Another business in another state could innocently be using your mark. It could dilute the mark or damage the mark, but it is not illegal for them to use the mark necessarily because it is an innocent use of it,” said Semmler. “Whereas if you register your mark federally, it puts the United States on notice that someone owns this mark and is using this mark and someone has prior ownership or use of it.”

“It certainly doesn’t prevent infringement, but it gives you recourse. You can enforce your rights to that mark and make the other entity stop using it.”

When registering a trademark at the federal level, Semmler said it is well worth the investment to hire an attorney competent in this area of the law as the process is more complicated and expensive. It is also important to properly search registered marks to ensure you aren’t attempting to register a deceptively similar or currently-registered mark.

Final Notes
As businesses, including banks, struggle with hiring and retaining employees, a good brand and trademark with positive connotations can help an employer appear more attractive to potential candidates.

“Trademarks impact more than just how you market yourself to customers and what you put on a TV ad or in the newspaper. In hiring and retaining employees, what we are learning about folks who are coming out of college is that they want to feel like they are part of something that is bigger than themselves,” Semmler said.

“That can be one of the elements in making your organization attractive to that up-and-coming, perspective employee. The logo you wear on a shirt, baseball cap or coffee cup—the logo that means something to them and the organization.” 

Kara Semmler has a business administration degree from Carthage College in Kenosha, Wis., and a juris doctor from Hamline Law School in St. Paul, Minn. After graduating from law school, she returned to her hometown of Sioux Falls and spent two years in private practice. In 2006, she moved to Pierre and worked as a staff attorney for the South Dakota Public Utilities Commission. In 2012, she joined May Adam, where her practice focuses on the needs of businesses and families statewide. To contact May Adam, an SDBA associate member, call 605.224.8803 or visit

Story by Alisa DeMers, South Dakota Bankers Association

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