Our Top 10 Trademark Tips
The authoritative treatise on trademark law, McCarthy on Trademarks and Unfair Competition, consists of 7 volumes and thousands of pages on developing, registering, licensing, protecting, and litigating trademarks and related rights. This list is not quite as extensive. However, when it comes to the most important elements for those just starting to explore the nature of trademarks and trademark rights, these 10 tips will give you an understanding of some of the more important elements to consider for your business.
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1. Choose Strong/Unique Marks
Consider the elements that make your trademarks easier to protect. There are typically 3 ways that business owners approach selecting names, logos, and other marks (like slogans) to use with their business:
There is a tradeoff to consider when choosing a more descriptive name vs. a more unique name. Choosing approach #1 will require little or no marketing for people to understand what you’re selling, but it comes with little or no trademark protection. Approach #3 will require a strong and sustained marketing effort to educate your target customers about who you are and what you’re selling, but should afford much greater trademark protection for the life of the business.
Trademark strength is classified by the United States Patent & Trademark Office (“USPTO”) according to the following scale, from weakest to strongest. The name in parentheses is how a hypothetical ice cream shop would be classified:
1. Generic - ("Ice Cream Shop")
2. Descriptive - ("Chicago's Best Ice Cream Shop")
3. Suggestive - ("Moo-Moo")
4. Arbitrary - ("Happy Monkey")
5. Fanciful or Coined - ("Zoku")
Keep in mind, there may be strong business reasons for using a name that falls closer to the generic/descriptive end of the spectrum above. If your family has been successfully running Smith’s Dry Cleaning for the past 50 years, changing your name to Paxit or some other invented name will most likely cause more harm than good.
However, with many companies and entrepreneurs operating their businesses partially or completely online and selling to customers around the country or the world, it becomes more and more important to have a business identity that is unique and able to be protected from competition.
2. Evaluate the Competitive Landscape
Make sure the market isn’t flooded with similar names/designs and that your use will not be infringing on others’ rights. The fewer similar marks that exist in your industry, the easier it will be to protect the rights in your trademarks.
Consider the current competitive landscape in your target market, whether that’s local, statewide, nationwide, or globally. Are several companies using names and designs that are similar to yours? Just because you’ve never seen anyone using your name locally doesn’t mean there isn’t someone on the other side of the country doing so already. While that might not be a problem when you’re just starting out, as you grow and expand you’ll likely come across their radar and that could lead to some serious problems. The last thing you want is to be forced into completely rebranding right at the point when your business is starting to take off.
Fortunately, it’s relatively easy to do some online investigating to see whether there are any immediate red flags that jump out. If the initial searches come back clean, a trademark attorney can perform a more in-depth search and provide an opinion as to whether your proposed trademark is available for use. Depending on your needs and budget, there are also full-service companies that specialize in conducting the most comprehensive trademark clearance searches possible. While no amount of searching can guarantee there will not be a conflict down the road, if you intend to spend a considerable amount of time and money on promoting and marketing your brand, a full search can be a very worthwhile investment.
3. Use Your Marks Consistently
In the United States, trademark rights arise when you actually start selling your goods or services using the trademark(s). These rights only continue as long as you are actively using the trademarks. That means that if you start doing business today as “Panda Design” and 3 years from now you change your name to “Rhino Design”, you’re essentially forfeiting the previous 3 years of trademark rights in “Panda Design” and beginning from scratch with “Rhino Design.”
This applies to logos as well. Small modifications may not affect your rights, but substantial changes in the design or overall impression of your logo can lead to a loss of rights as well. That’s why it’s important to be consistent when using your trademarks. Putting the time and effort into developing something you love today will pay dividends in the future. If you’re considering revamping your brand identity or switching gears entirely, be sure you understand how that will affect your existing rights so you don’t unintentionally forfeit them.
4. Think About the Future of Your Business
Don’t limit yourself to the next month or year when thinking about your trademarks and overall brand protection strategy. Think about where you want it to go. What other areas do you hope to move into in the future? If you’re strictly doing business consulting now, will you add online courses or start doing speaking engagements in the next year or two? Will you sell branded apparel or coffee mugs? These are important considerations when carving out the scope of your trademark protection.
Trademark rights are classified into several different “categories” by the USPTO. There are actually 45 different categories to be exact – 38 for products and 7 for services. When you submit a trademark application, you select which categories your business will be operating in when using that trademark. That means that if you register “Delta” you don’t automatically have exclusive rights to use the name Delta on anything and everything you want. That’s why Delta Airlines and Delta Faucets are able to coexist.
When your trademark application is filed with the USPTO, an attorney from the USPTO’s office is assigned to examine/review your application. Part of that examination involves reviewing previously-registered trademarks to see whether any of them are similar to your new application. If the examining attorney determines that allowing your trademark to be registered would create a “likelihood of confusion” with a trademark that is already registered, your application will be denied. Sometimes these denials can be overcome by presenting evidence showing there would not be confusion, but it can add significant additional time and expense to the process.
The takeaway is that trademark categories are important for at least 2 reasons: 1) You need to register your trademarks for all of the categories that your business encompasses; and 2) You need to identify whether there are any pre-existing marks in the same or similar categories that could cause your application to be denied. Anticipating where your business is heading in the coming years will give you the best opportunity to carve out rights in the classes that you intend to use at the beginning and in the coming months or years.
5. Don’t Forget Domains and Social Media Handles
Depending on the nature of your business, you may have been thinking about social media accounts from the very beginning. For others, social media may play a lesser role or be just one of several marketing channels they plan to utilize. This tip is pretty easy, but important to consider nonetheless: If Facebook, Instagram, Snapchat, or any other social media platform is going to be important to your business, make sure that the names you want to use are available. Similarly, check to see if the domain name you’d like to use for your website is available and consider registering multiple domains for close variations of your name and have those “variation” domains redirect to the domain where your website is hosted.
Registering for social media accounts is free and domain names are extremely cheap to obtain (typically less than $20/year) so there is no reason not to reserve both early on, especially if they’ll be important to your marketing and branding efforts.
6. Obtain Federal Registrations For Your Valuable Marks
It is a common misconception that registering a business name with the state where your business is located (like “Wendy’s Wacky Widgets, LLC”) provides trademark protection. Unfortunately, this is not the case. Registering your business entity simply allows you to legally operate your business under that name within that particular state. Most states will even allow other businesses to register nearly identical names (like “Wendy’s Wackiest Widgets, LLC”).
Rather, certain trademark rights (known as “common law” rights) are automatically granted to the first to sell goods or services in a particular geographic area under a certain trademark. However, those rights are very limited and nearly impossible to enforce without filing and pursuing a lawsuit claiming trademark infringement. That’s where obtaining federal registrations from the USPTO can offer several advantages. One of the most important is that a federal registration gives the owner a presumption of nationwide rights to use the trademark, meaning you will be able to grow and expand your business without worrying about encountering unexpected lawsuits or angry cease and desist letters. It also provides valuable tools for stopping the unauthorized use of your trademarks online and shutting down those trying to sell counterfeit goods using your trademarks.
When is it the right time to seek a federal registration for a trademark? In general, a good rule of thumb is that if a trademark has value for your business (i.e. it’s making you money), or you’ve spent significant time developing a name or logo that you really love, then it’s worth protecting. Just ask yourself, “how would I feel if someone else started using my name and logo?”
7. Work With An Experienced Trademark Attorney
As with most things in life, you get what you pay for. I’m not going to tell you that it’s impossible to file a trademark application by yourself. However, what seems like a relatively simple process at first glance is actually much more complex in practice with several moving parts and numerous rules and exceptions that can trip up those who are not familiar with the process. In addition, once an application is submitted, certain mistakes cannot be corrected and filing feels are not refunded if that happens (which means you could be out several hundred dollars and having to start all over again).
Working with an experienced trademark attorney can help you understand the process, learn about your business, direction and goals for the future, and then map out a strategy to give you the best chance at successfully registering your applications and obtaining the broadest protection possible.
8. Monitor Marketing and Sales Channels
Selecting strong, unique trademarks, using them consistently, and obtaining federal trademark registrations is only the beginning. Having first priority and rights in your trademarks doesn’t do any good if you’re not prepared to take steps to enforce them when necessary. Once you’ve carved out your rights, it’s up to you to monitor and enforce those rights.
There are several ways to go about monitoring the competitive landscape, from simple things like setting up Google alerts, browsing e-commerce sites, and performing regular searches online, to more sophisticated monitoring software or hiring a 3rd party to monitor your marks and provide reports at regular intervals. Either way, set up a system to monitor marketing and sales channels to identify and shut down copycats, unauthorized trademark use, counterfeits, and any other trademark infringement.
9. Calendar Important Future Dates
To keep federal trademark registrations alive and active, the owner is required to file maintenance documents at regular intervals. In particular, there are documents that need to be filed between the 5th and 6th anniversary of the date the registration was granted and between the 9th and 10th anniversary. One of these documents is called a Section 8 “Declaration of Use” that must be filed between the 5th and 6th anniversary of registration and between the 9th and 10th anniversary of registration. A Section 15 “Declaration of Incontestability” may also be filed between the 5th and 6th anniversary.
Since they’re years down the road, it’s easy to forget about these dates, but failing to file a Declaration of Use will lead to your registrations lapsing and being cancelled. If you work regularly with a trademark attorney, he or she should have a system to track and monitor these important dates. However, scheduling these dates in your personal calendaring system is always a good idea as a backup since you are ultimately the one responsible for making sure your registrations are maintained.
10. Consider Filing International Applications
Keep in mind that registering your trademarks with the USPTO only grants you trademark protection within the United States. If you plan to sell your goods or services outside of the U.S, you should consider filing international applications and obtaining trademark registrations in the foreign countries where you intend to operate. The “Madrid Protocol” is a treaty that can provide a cost-effective and efficient way for trademark holders to protect their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees in the same currency.