The process of registering a trademark seems daunting at first, but once you understand a bit more about it, you can make an informed decision about whether registering a trademark makes sense for your brand.
Of course, in the conversation today, we are talking about registering a trademark with the United States Patent and Trademark Office. Federal Protection provides the strongest protection for your mark.
The process of filing for a trademark is, at the same time, simple and complicated. The most complicated part of the trademark is the research portion. It is important, before you use a mark, to research to ensure you are not infringing on someone else’s mark. It is also important, before you attempt to register a mark to ensure it meets the criteria for a registered mark.
Much of the work of registering a trademark is in researching whether the mark can be registered.
There are two different types of trademarks you can register. Sometimes, it is beneficial to file for both to make sure that you have protected your special design and your words
A standard character mark is a mark that encompasses the words in any form. That means that your logo can change, but you do not have to register the mark again.
The special form mark is the expression of your trademark in whatever form you register. That means that you will be stuck with a logo that will cost you a lot to change because you will need to register any new versions. Special form marks can be in color or simply the form with disregard for color.
If you are looking to save money in Trademark registration, Standard Character is always the safer bet. Special Form guards against the look and feel of the trademark more than the words. With Standard Character, you have protection no matter how your words are presented, but the look of your logo (font, color, etc) is not necessarily protected, just the words.
If you only register the Special Form, you will not have the strength of federal protection for the words in your logo used in other forms. If, however, you only register Standard Character, you will not have the federal protection against the look and feel (color, style, font, etc) of the logo.
Standard Character will grant you protection from anyone using the same or a similar name.
Special Form will grant you protection from anyone using a same or similar logo (or widget image).
A Distinctive Difference
Whether or not you choose to file for Federal Trademark Registration, you need to make sure to protect your marks. For trademarks, the issue of infringement involves the “likelihood of confusion”. When you fight to protect your trademark from use by others you create a mark that is distinctive. A mark that people recognize. As you build a product (or app), you create a name for that app and you gain more protection in your mark.
Distinctive marks have more protection. If you can prove you have a distinctive mark (think the golden arches), you can argue that use of your mark (even if it is outside of your industry) dilutes your mark. Once you have a mark that is so well known that people are clamoring to use it, you can stop anyone from using a mark like yours because it could make your mark seem less unique. If golden arches were used to sell shoes or car parts, it would not mean the same when you saw them. Now, if you see golden arches, you know, for better or worse, what you are getting. That is a distinctive mark. That is what you want. That is why you protect your mark.
Monitoring Your Mark
That is why it is important to protect your mark. When you are growing your business, you need to keep an eye on each of your marks. You need to make sure no one is infringing on your mark within your market, but you also need to keep an eye out for use of your mark at all to try to protect your mark as it gains distinctiveness in the marketplace. If you do not guard your mark early, you may have a difficult time claiming it is being diluted when it has gained distinctiveness. Dilution of your mark can include either making your mark look bad (a low quality product) or making your mark look less unique (like you are offering products or services outside of your niche or cheats to your own games). Either way, once your mark has gained some notoriety, you can protect it.
So, when you get started, make sure you are monitoring your mark. Use google. Set up a google alert on your mark. Make sure you set up searches that are more than simply your mark. Run searches of your mark and variations on your mark. Remember, the issue is confusion or likelihood of confusion so you want to make sure you run searches that are similar or potential variations on your mark. That way, you are truly monitoring your mark. You want to revisit your search on a regular basis to make sure you are truly searching for potentially infringing marks.
Though you have rights in trademark without registering your mark, registration provides additional protection. Some of the protections afforded by registering your trademark with the United States Patent and Trademark Office are:
Helps to prevent others from infringing on your mark.
One of the most common places to search trademarks for entrepreneurs and business lawyers is the USPTO trademark database. If you have a mark registered there, one of the ancillary benefits is that it will be easily located when others are determining what trademarks they will use in their business. The same is true for registration of marks, the USPTO will reject applications for marks similar to yours. But only if you were there first.
Nationwide Use on Launch
Federal registration of a mark treats the mark as if it is throughout the United States as of the application date. This is huge whether you are building a traditional business in your state looking to expand or building an online business that exists everywhere when you launch. If you have not registered your trademark and someone else begins to use a mark similar to yours somewhere you do not yet have a presence, you will have a difficult time protecting your mark if you do expand.
Proof of Ownership
Ignorance is no excuse when it comes to trademark infringement. Your registration provides notice of your ownership as of the date of registration. That means, if someone starts using your mark later, the law will not look kindly to their failure to check the trademark database.
Proof in Court
If you must file a lawsuit to protect your rights, your registration provides evidence that you own the mark as you have registered it. After five years on the database, you can apply for your mark to be made incontestable. This may even keep you out of court because it is much stronger than simply sending a cease and desist. You have proof. And everyone knows it.
Use of ®
Until you register your mark with the USPTO, you cannot use the ® symbol for your mark. Once it is registered, you can begin using it. This gives further notice of the strength of your mark.
If you do not protect your trademark by registering with the USPTO, you lose the federal benefits of that registration. That means, you will not be able to sue in federal court and you will not, necessarily, be able to obtain attorneys’ fees and other damages allowed by federal law. What is worse, you will be subject to litigation in every state where infringement may occur.
Federal trademark registration is the first step to protecting your mark internationally. If your business is expanding, or if your online expansion makes it necessary, this could be very important protection.
Protection from Imports
You can register the copyright with U.S. Customs Services to protect from importation of infringing trademarks and counterfeit products.
Of course, the decision to register for federal protection of your trademark is a decision to be made in your business. The benefits are high, but you need to determine if it is an investment that will reap benefits for your brand.
Do you regularly register trademarks in your business? How do you determine which marks are worthy of registration?
I’ll talk to you next week, unless you talk to me first;)
P.S. Want to know more about Trademarks? Check out the Legal to English Intellectual Property Guide!