There are several steps that a business owner should take when starting a business to protect intellectual property: (1) conduct trademark clearance searches and file trademark applications, (2) form a business entity, and (3) put all business dealings into written contracts.
These steps are very important to protecting your business, and the trademark registration process is arguably the most important aspect to ensuring that a company has exclusive rights to its business name, logo, slogan, or designs. Trademark owners should make sure that their companies own all trademark rights, copyright rights, and patent rights, if applicable.
A company could have many different trademarks. If you had to prioritize, you probably should seek trademark protection your company's name first on the federal level with the U.S. Patent & Trademark Office.
What is a trademark?
A trademark is “a word, phrase, symbol, or design, or a combination thereof that identifies and distinguishes the source of goods of one party from those of others.” In simpler words, a trademark is a brand identifier. A trademark is what makes your business unique from another business. Customers will be able to identify your business by its trademarks.
How do I get a trademark?
As soon as you start using a particular trademark (name, phrase, logo, etc.) in public for business, you receive automatic common law protections. However, these common law protections are limited. That is why successful businesses choose to apply for federal trademark registration with the United States Patent and Trademark Office.
Before you submit your trademark application to the USPTO, you should have a law firm conduct a trademark clearance search. It is important to make sure that the mark that you are trying to register is not already owned/used by someone else. Your trademark should not confuse a consumer with a similar trademark owned by someone else. Otherwise, the other user could sue you for trademark infringement.
You might also receive a "2D Likelihood of Confusion" Office Action refusal from the USPTO examining attorney. This could all prevent you from using the mark, having to spend money to redesign your business cards and website, and even paying legal damages to the other owner. Thus, the trademark clearance search is due diligence that can save time and money in the trademark registration process.
A mere Google search is not enough of a trademark search to determine if your brand name or logo is infringing. Just because you did not find the exact match on Google, does not mean that your federal trademark applications won’t be denied for having marks that are too similar to other trademarks.
Searching the USPTO database is also almost always inadequate. The USPTO only reveals marks with the exact same search terms that you enter. Therefore, you may not see marks that are too similar to your mark if this is your only method of searching prior to your trademark filing.
An experienced trademark attorney is able to uncover both exact marks and similar marks in a comprehensive search that could can save your trademark application from being denied and legal issues.
You should consider registration of a trademark after a trademark clearance search.
You will need a trademark lawyer to file the application if you are not currently living in the United States. However, there are benefits of having an attorney represent you even if you are currently living in the U.S. Lawyers can avoid certain mistakes and pitfalls on the trademark application. It may seem like a simple application but it is complex. Mistakes could cost you your application approval, time delays, and more money to fix the application than if you had an attorney complete it in the first place. The filing fee is $350 per category, formally known as an "international class."
Are trademarks important?
A registered trademark has three major benefits. First, a registered trademark can prevent and preclude others from copying your trademark. You are going to spend money, time, and resources promoting your marks and your business. Someone else should not be able to ride on the coattails of your hard work. Protect your investments like your company's name, with federal registration of your marks.
Second, a registered trademark can save a business owner money on legal fees in the future. A registered trademark establishes certain presumptions in a lawsuit that would otherwise have to be established by a party to the lawsuit. The more work it takes to establish a presumption means the more money you have to pay an attorney to establish that presumption for you. A trademark helps to skip that step and therefore helps to avoid extra money you would have to pay your lawyer at a trial. Moreover, the due diligence clearance search helps reduce the risk of being sued for infringing on another brand.
The third major benefit to having a trademark is that a proprietor and their business can more efficiently expand their brand. The USPTO will not grant registration if a mark is too similar to another mark. That means that you might not be able to expand your business into a new category if you do not register the name/design and someone else does. For example, if you do not register your marketing company's name and someone else registers the same name for an SEO platform, you could be prevented from using that name for your future SEO platform.
A trademark protects intellectual property, saves proprietors on legal fees, and allows businesses to expand into other markets with more efficiency.
Common law trademark protect can be instant, but it could also cost you more to enforce in the future compared to having access to federal laws in federal court.
Moreover, the wait times for registration of trademarks has been delayed since COVID. Nevertheless, you should file your trademark application (via an online filing) as soon as possible to obtain priority, give public notice, and avoid contesting your legal rights in federal court (or at the state level, also).
If you need legal advice on how to properly obtain a trademark, please contact me. My firm's legal services also include responses to Office Actions that can give you the best chance of obtaining trademark registration on the principal register, and consulting on ownership of a registered trademark.