Trademarks 101 - What You Need to Know to Protect Your Business Trademarks
Your business name and brand are some of its most important and valuable assets. Here are the basics of what you need to know to protect your business trademarks.
WHAT IS A TRADEMARK?
A trademark is a word, name, or symbol that identifies and distinguishes the goods/services of your business from those of your competitors and indicates the source of your goods/services. Typical examples of trademarks include your business name, logo, marketing slogans, and product names.
HOW DO I OBTAIN RIGHTS TO MY TRADEMARK?
Trademark rights are obtained through actual use of your trademark in commerce in association with your company’s goods or services. So, If you have a business name, logo, slogan, or product name that you use to sell goods or services, you may have common law trademark rights even if you have never registered your trademark. Common law trademark rights belong to the business that first uses the trademark, although the rights are limited to the types of goods and services sold by that business and the geographic region in which the business actually operates.
For example, if you use a brand name to sell a certain type of product only in Chicago, you may automatically have common law trademark rights that would prohibit others from using the same brand name to sell the same type of product in Chicago (assuming that you were the first to use that name in Chicago for your product type). However, your common law trademark rights would not prohibit another business from using the same brand name to sell the same type of product in California, or from using the same brand name to sell a completely different type of product in Chicago.
In addition to the scope limitations above, common law trademarks can also be difficult to enforce because it can be difficult to prove when your use started and the geographic reach of its use. These issues can be avoided by registering your trademark, as discussed below.
WHY SHOULD I REGISTER MY TRADEMARK WITH THE USPTO?
Although federal registration of your trademark is not required, it does have several advantages, including:
Providing notice to the public of your claim of ownership of the trademark and your date of first use;
Providing a legal presumption that you own the trademark nationwide;
Giving you the exclusive right to use the mark on or in connection with the goods/services listed in the registration;
Preventing others from registering the same trademark or one that is “confusingly similar” to your trademark;
Giving you a basis on which to register the trademark internationally;
Empowering US Customs and Border Protection to block imports of goods that infringe upon your trademark ; and
Giving you several advantages in court cases to enforce your trademark, including the ability to bring your case in federal court, a presumption that your trademark is valid, and sometimes treble/triple damages, statutory damages, and/or an award of your attorney fees incurred in the case.
WHEN SHOULD I REGISTER MY TRADEMARK?
Although there is no deadline to register your trademark, you should consider registering your trademark as soon as possible to prevent the risk of someone else registering it first or gaining common law trademark rights from use of the same trademark in another geographic location before the date of your registration. In fact, you can even file an “intent to use” registration before you begin using your trademark in commerce, which can preserve your right to use the trademark in the future.
HOW DO I REGISTER MY TRADEMARK?
Information on how to register your trademark is available from the USPTO website by clicking here. While some people choose to register their trademark on their own without an attorney, doing so without experience and knowledge of the process and legal issues involved may:
Jeopardize the legal validity of your application or registration;
Prolong the time it takes for your application or registration-related submission to be examined; and/or
Cause your application to be rejected or abandoned or your registration to be cancelled.
An experienced trademark attorney will be able to help you by:
Determining if your chosen trademark can be legally protected;
Conducting a clearance search to determine whether the trademark is available for your use;
Determining the appropriate filing basis for your trademark application;
Preparing and filing a trademark application with the USPTO that is complete and accurately identifies your goods and services;
Selecting an appropriate specimen that shows how your trademark is used in commerce;
Responding to questions and refusals to register your trademark from a USPTO trademark examining attorney;
Helping you understand the scope of your trademark rights and the best ways to enforce them;
Defending against challenges brought by others against your trademark; and
Preparing and filing documents with the USPTO to maintain your registration.
HOW MUCH DOES IT COST TO REGISTER MY TRADEMARK?
The USPTO fees for registering a trademark range from $225 to $400 per class of goods or services. A full list of USPTO trademark fees can be found here. If you choose to engage an attorney to assist you and/or choose to have a clearance search performed prior to registering your trademark, those items will add additional cost to your registration. Attorney fees and clearance search fees can vary quite a bit, with some being very expensive.