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What is a Trademark and When you Might Need One?

How are you managing intellectual property in your business? It’s a big question – one we thought worth exploring in a series of articles. The last time we talked it was all about patents, probably the most complicated and elaborate protection of intellectual property.

Trademarks, by comparison, are much simpler and inexpensive. That’s not to say they aren’t important and don’t deserve careful consideration. They are hugely important because without them your business name, logo, slogan – all of the stuff that helps people recognize your business out there in the marketplace – are up for grabs.

Let’s start with the basics. What is a trademark? According to the US Patent and Trademark Office:

“A trademark is a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms ‘trademark’ and ‘mark’ are commonly used to refer to both trademarks and service marks.”

So trademarks protect brand names, slogans, and logos. The legal process of trademarking exists to send out a formal notice that a business is declaring exclusive rights to a name.

Getting Started

The first step to take in registering a trademark is to see whether or not and/or how others are using a name, slogan or logo.

USPTO has a trademark database called TESS. If your mark contains design elements, you’ll want to start your search with that. Check out the Design Search Code Manual for details on how to go about that. From there you can search the TESS database for marks that match your criteria.

One point of clarification. The TESS search is a preliminary search. It might be worth your while to conduct a comprehensive search through an intellectual property attorney. The added cost may save you some headaches in the long run.

When you are ready to move forward with the registration, the Trademark Information Network has an excellent series of video tutorials that walk you through the entire process.

Similar to other forms of copyright, trademarks can be protected even without U.S. federal registration. If you can prove you used the mark before someone else used it, or failed to register their mark with the United States Trademark Office, you may have superior rights – even without registration. But for the most robust trademark protection, you’ll want to register the trademark at the USPTO.

Some Common Mistakes to Avoid:

  • Registering a name without also securing the URL and social media monikers. If you are going to the trouble of registering your business, secure the URL and set up those Facebook, Instagram, and Twitter accounts!
  • Assuming registering the trademark is unnecessary – while you may have a case for prior use without a registered trademark, your case is much, much stronger with the documentation to back it up.
  • Not monitoring and enforcing your trademark. Nobody’s going to do it for you!
  • Using your name in the business name thinking that it exempts you from registering the trademark. It does not.
  • Not maintaining your trademark. I know, details, details! Somewhere in the fine print of the USPTO, it is specified that between the fifth and sixth year and between the ninth and tenth year after you register your mark, as well as every ten years thereafter, you have to file specific registration renewal documents or the USPTO could flag your trademark as abandoned and cancel it.

So if you have not already, get that name, logo and tagline trademarked! You don’t want to be scaling your business and making great headway, only to have someone else claim your name or other identifying feature of your growing brand.

Taking care of trademarks is just one more aspect of taking care of business.

Resources:

  • https://fitsmallbusiness.com/how-much-does-a-trademark-cost/
  • https://www.uspto.gov/trademarks-getting-started/trademark-process
  • https://www.forbes.com/sites/jesscollen/2019/05/10/small-business-top-10-basics-on-ip-rights/#3327bdb626e0
  • https://smallbiztrends.com/2015/07/small-business-trademark-mistakes.html
  • https://info.legalzoom.com/use-tess-trademark-22401.html
  • https://www.uspto.gov/trademarks-application-process/search-trademark-database
  • https://tess2.uspto.gov/tmdb/dscm/index.htm https://www.uspto.gov/trademarks-getting-started/process-overview/trademark-information-network