If you own a business that sells a product or provides a service, chances are you need a trademark. But what is a trademark?

A trademark is a word, phrase, symbol, design, combination of letters or numbers, or other devices that identifies and distinguishes products or services in the marketplace. The Nike swoosh? Trademarked. McDonald’s golden arches? Trademarked. NBC’s chimes? Trademarked.

The Importance of Trademarks

Trademarks are extremely useful for businesses that want to use brands to help consumers easily distinguish their company and product. These “marks” make it easy for consumers to know where a product or service is coming from. If trademarks are working the way they should, consumers should be able to choose their desired product or service without any confusion.

Trademarks also allow business owners to create, promote, and invest in a brand (or brands) for their products and/or services. This is especially the case for small business owners who live and die by the quality of their products and/or services. There is a peace of mind in knowing that another company cannot sell a worse version of your product under your trademark, thereby ruining your business’s reputation in the marketplace.

Federally Registered vs. Common Law Trademarks

There are two types of trademarks, those that are federally registered (®) and those that are purely common law marks (™).[i]While you can only use ® if you have federally registered a mark with United States Patent and Trademark Office (“USPTO”), you can use the ™ symbol freely without needing to formally register the trademark.

If you can you should always federally register your mark, as these marks are awarded far more protection than common law marks. While there are geographic constraints to common law marks,[ii]federally registered marks are given nationwide protection. Furthermore, registering a mark federally provides the following:

• Notice to the public that the person registering the trademark owns the mark;
• The exclusive right to use the mark nationwide;
• The right to bring action to federal court for any cases that concern the trademark;
• The ability to use U.S. registration to register the mark in foreign countries; AND
• The ability to file with the U.S. Customs and Border Protection to prevent products that may infringe on the trademark from being imported.

Before Registering Your Trademark

Now that you know the benefits of federally registering a trademark, you are probably wondering how to do it. Before going through the registration process on the USPTO’s website, there are several things that should be done.

Is Your Mark Being Used?

First, ensure that your mark is being used in the ordinary course of commerce. The USPTO will not approve the registration of a trademark if it is not being used in the marketplace. Please note this does not mean that a mark can be used in commerce purely for the purpose of reserving rights to the mark.

For any business owners that have a desired trademark but no product as of yet, there is an intent to use trademark application. Essentially, this would grant trademark protection for a mark that is not yet used in commerce. However, the mark must be put into actual use within six months of the registration.

Is Your Mark Distinctive and Unique?

Second, make sure your desired trademark (i.e. name, symbol, sound, etc.) is distinctive or unique enough such that it can function as a trademark and distinguish your products. For example, Apple could not function as a trademark for the sale of apples. However, it could (and does) act as a trademark in relation to the sale of electronics. If you can’t think of a pre-existing name for your business, make one up!

Search for Your Trademark

Once you have decided on a mark that you think is unique or distinctive enough, perform a trademark search. While it may be in your best interest to involve a lawyer at this point, a general trademark search can easily be done by yourself. Start with Google. Look for any similar trademarks or company names (and be sure to look for ® and ™). If you think your trademark may be too similar to another, it probably is. Do not be afraid to re-brand. Change the company name or logo. It will cost far less money to do it now, rather than when your company is established.

The USPTO also has a searchable trademark database (TESS). It may prove hard to navigate at first, but the USPTO provides plenty of helpful instructions on their website. Remember, do not just look for exact matches. Similar marks can be the difference between your mark and federal registration as well.

The Final Step

Upon completing your trademark search, you should feel free to register your mark. This can be done online either by you or your attorney. The application does cost money, so be sure you have met all legal requirements before submitting. Applications can take almost a year to possibly several years to be processed, depending upon the basis for filing and the legal issues that may arise through examination of the application.

Registering your trademark may seem costly and time consuming. However, one simple application could save you and your business a lot of money in the long run.

SOURCES:

https://www.uspto.gov/trademark

https://www.uspto.gov/trademarks-getting-started/trademark-basics

https://www.upcounsel.com/trademark-search

https://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples

http://www.panitchlaw.com/knowledge-center/2015/06/trademarks-101-basic-principles-every-organization-needs-to-know/

ENDNOTES:

[i] Service marks are designated by ℠.

[ii]Common law marks are protected in the geographic area in which the mark is continuously in use.