You’ve worked hard to start your business, spent time thinking about your branding. Now, you’re starting to think about what happens if someone steals it! This can be scary as a a business owner and often has you asking whether you should trademark your brand?
The answer is it depends, and like with most legal stuff, it’s a little more complicated than just a straight yes or no. This article will teach you more about trademark, what it’s for, how to do register one, and whether it’s right for your business.
What is trademark?
There are trademarks and service marks. Trademarks protect goods, while service marks protect services. They are essentially the same, just protect different things. For the sake of this article, I will use the word “mark” to refer to trademarks and service marks.
The purpose of a trademark is to put consumers on notice of the source of the goods or services. For example, we all know the golden arches mean we can get a Big Mac. The swoosh means we are getting quality athletic shoes. When a consumer knows the source of the goods or services, they know what to expect from the product or service. It’s important to protect these marks, because you don’t want another business profiting off the goodwill you’ve built with your customers.
This is different from Copyright in that you aren’t protecting the work, you are protecting the right to use the work in relation to your business.
What can be trademarked?
Logos, slogans, brand names, product lines, and even sounds can be trademarked. The lion’s roar for Metro-Goldwyn-Mayer Studios (MGM) is an example of a trademarked sound.
To be eligible for protection, a mark has to be in use in interstate commerce. This means the mark is currently being used on goods, to identify services, on packaging or displays. This can also include display on a website. This also means you can’t have protection for a mark you simply want to use someday or have an idea for.
There is a separate application for “Intent-to-Use” that allows you to sort of pre-protect your use of a mark that can be used in certain situations.
To be registered, a mark can’t be so similar to another mark that it causes a “likelihood of confusion”. This is a legal standard that basically means if a consumer would be confused as to the source of the goods or services, then the new mark won’t be registerable. This can be a tricky analysis and is why you should do a thorough search before applying for a trademark.
What can’t be trademarked?
While a lot of things can be trademarked, there are some that cannot. If the mark is merely descriptive (Apples for apples), it’s not going to be registereable.
You also can’t trademark something that has another use, like decorative or useful. For example, many years ago Adidas tried to trademark the stripes on their shoes. This wasn’t allowed because before they had said the stripes served the purpose of reinforcing the sides and making the shoe more durable.
You also can’t use a name or last name.
All of these, while not registerable initially, can obtain “secondary meaning” which makes them available for registration later. This means that initially a person’s last name wasn’t registerable, but over time, consumers began to associate that name with that particular company in a particular industry. For example, Hilton for hotels.
Why would you trademark your brand?
Some of the practical reasons to trademark your brand include:
- Presumption of ownership
- Listed in the USPTO database
- Record with US Customs & Border protection to prevent importation of infringing foreign goods
- Right to use the ®
- Ability to bring infringement action in federal court
- Use of US registration as basis to register in other countries
Should you trademark your brand?
There are practical reasons to register your mark, but I always tell clients they know it’s time to register when they would be devastated if another company started using a mark.
Trademarks can be a great asset to a company, too. If you want to sell your business in the future, having registered intellectual property will add to the value of it.
If you decide to trademark your brand, keep in mind that enforcing it is on you. The USPTO will not help you police your mark in any way and if someone is infringing, it is up to you to find and get them to stop.
How do you trademark your brand?
You can register a trademark with the US Patent and Trademark Office. Applications can be filed online. When you apply, you will choose what category or “class” you are applying for protection in. The application is located here. The USPTO’s website has a lot of helpful information as well for additional reading.
Doing a thorough search and choosing the correct class is important before you apply to make sure your mark is approved. Application fees are non-refundable. There are a lot of legal things I think people can do on their own, but trademark registration is not one of them. I do know laypeople who’ve done it successfully, so that’s not to say it can’t be done on your own. But, it can be a complicated process.
Additional note about common law trademark
You may have heard that you have automatic trademark protection just by using something in commerce. This is true, but it comes with caveats.
When you use a brand name, for example, in commerce, you have automatic common law trademark protection. The problem is 1) this gives you no right to bring an action in federal court for infringement and 2) it only protects you in your geographical location. A few years ago, maybe this protection was enough. If you owned Peppy’s Pizza Parlour, and had no intention of franchising it nationwide, all you really needed was protection in your area. This is changing as more and more businesses move online. That’s not to say your common law trademark would be useless, but in our digital age it’s going to have less actual protection than before.
Many businesses have no federally registered marks and do just fine. While others have dozens of registered marks. Whatever you decide for your business, keep in mind that it is your responsibility to enforce your mark. Also remember that registered marks are an asset of your business, so though the process may seem expensive, you can think of it as a business investment.
Disclaimer: This site, and all information contained herein or through communication with me, is intended as legal information only. I am an attorney, but I am not your attorney, so nothing on this site, nor any communication with me, shall create an attorney-client relationship. I am not liable for damages or losses based on any action taken, or inaction, based on the information contained on this site. All areas of the law are fact specific and there is no substitute for legal advice from an attorney licensed in your jurisdiction who is familiar with the specific facts and circumstances of your situation.