Should I Register My Trademark?
July 15, 2022
Should I Register My Trademark?
Should I Register My Trademark?
Starting a business typically means juggling a slew of priorities, and the legal side of entrepreneurship can be overwhelming and intimidating. The team of legal counselors at Counxel has spent their career helping small business owners establish and protect their trademarks.
Your trademark is one of the first impressions a customer will have of your brand, and it ensures your hard work belongs to you from day one. Defending your mark and protecting your brand should be at the top of your priority list, and the legal experts at Counxel are ready to help you through every step of that process!
Choose a Strong Trademark
Aside from ease of registration, your chosen trademark should be strong; after all, it is the first impression a potential customer has of your brand. A strong mark also protects you against infringement. There are a few categories of trademarks to become familiar with when choosing one for your business:
Generic TrademarksWords or phrases used to describe a general product or service (i.e., “computer” or “cleaning service”) are routinely denied trademark registration with the United States Patent and Trademark Office (USPTO).
Descriptive TrademarksThis typically goes hand in hand with a generic trademark. It consists of a generic word preceded by an adjective (i.e., “tiny computer”). These trademarks are rarely approved because they tend to be vague and aren’t unique.
Suggestive TrademarksThese indicate the product or service being offered within the name; for example, Pizza Hut. While suggestive marks offer greater protection, you run the risk of a potential competitor using similar phrasing, like Pizza House. In very saturated markets (like pizza restaurants) this may be less of a concern since your product and service will likely carry more impact than your brand recognition.
Arbitrary TrademarksThese are known words that are not necessarily indicative of the product or service being offered, like Apple. Although these are better than suggestive or descriptive marks, keep in mind that they do require more marketing since the connection to the product or service is not inherently known.
Fanciful TrademarksThese offer the strongest protection. They are largely made up of terms with no relation to the product or service. These names are easy to recognize and remember, such as Nike or Starbucks.
Register Your Trademark
While using your mark in business advertising may give you common law protections, those protections are actually very limited. To obtain complete trademark protection, you need to register with the USPTO. This requires a few extra steps, but it’s the best way to protect your brand. Before applying you should be able to demonstrate to the USPTO that you have been using the mark in actual commerce. This can be something as simple as using it on your website or the advertisements you’re already running.
The date you file your application, known as your priority date, will be the day that no one else can register a similar mark. When submitting your application, make sure you specifically identify the type of product or service the trademark will represent. It’s important to remember that your trademark only covers products and services listed accurately in your application. This is why it helps to work with an attorney who will be able to make sure your application is as thorough as possible.
Should You Register a Trademark Internationally?
Unfortunately, the trademark protections you have through the USPTO will not hold up in other countries. This means that the first person to register your mark in any given country will likely be granted the rights. Without international trademark protections, it will be difficult (and in some cases impossible) to protect against counterfeiters and achieve global business expansion. This is a good time to consult with your legal team on your long-term goals for your business and evaluate if this is a concern.
Keep Your Trademark Use Consistent
Your trademark protections are only valid if you continue to use your registered trademark. Consistent use of the same words or logo as they were originally registered is a necessity. Using your mark inconsistently weakens your protections and could place you at risk in the event of an infringement. Though your trademark will never terminate, as long as you continue to use it, you will need to complete various maintenance filings over time.
Use Accurate Trade Symbols
The use of the ™ symbol may cause some to believe your business has a registered trademark, but this is not entirely true. While the TM symbol is indicative of a “common law” trademark, it does not mean the USPTO has officially and formally registered your mark. However, you can use the TM symbol prior to and once you file your application. Once your mark has been registered, you should begin using the ® symbol everywhere your products or services are displayed. This is a prominent visual reminder to the public that your mark is federally registered and protected.
To assert your rights as a trademark holder and protect your brand and business reputation, you need to monitor any possible instance of its use. Setting up a Google Alert for your trademark name will automatically prompt an email notification to you any time related to your trademark appears on the internet. We also recommend conducting regular searches for similar names throughout your industry or location.
What to Do When You Think Your Mark Has Been Infringed
While the USPTO formally and legally registers your trademark, they are not responsible for enforcing it. In order to protect your trademark, you must police it and report infringement.
A good first step if you find infringement is to confer with your attorney and discuss sending an official cease and desist letter. This puts the trademark infringer on notice and creates clear documentation for both parties. If the cease and desist isn’t effective, you can consider these actions:
When to Get an Attorney for Trademark Infringement
Once you have chosen a strong mark and registered with the USPTO, you can feel confident in the safety a registered trademark provides. However, to completely protect your trademark, maintain your deadlines and monitor unauthorized use we recommend working with a skilled trademark attorney.
At Counxel, our attorneys have experience protecting business owners and the hard work put into a brand. If you’re considering a new trademark or seeking protection for an active mark, we can advise you on the next steps and walk you through the process with ease.
* This article is intended for informational purposes only and does not constitute legal advice for your specific situation. Use of and access to this article does not create an attorney-client relationship between you and Counxel Legal Firm.
Lanham ActThe Lanham Act, enacted in 1946, created the national registry system and protects a trademark owner against similar use. The Act provides a way for companies to watch for alterations to their trademarks, prevents trademark dilution, and protects against false advertisement and the likelihood of consumer confusion. In order to qualify for protection under the Lanham Act, the mark must: 1) Be used in commerce AND cause confusion or deception, or 2) Contain false advertising. The “likelihood of confusion” test focuses on the similarity of marks and looks at the hard evidence of confused consumers, while the false advertisement test requires a trademark holder to prove there was a commercial injury caused by the advertisement.
Injunctive ReliefAnother option when fighting trademark infringement is to seek injunctive relief. Through injunctive relief, you can be granted a temporary restraining order or other enjoining court orders to stop the offending use. In August 2020, Arizona State University (ASU) did exactly this to protect its trademark and logo from false advertising related to COVID-19. A social media account was using school trademarks to disseminate false claims about the school’s requirements for the pandemic. Among other things, the account said students were not required to wear masks and claimed the school believed the entire pandemic was a hoax. ASU sought a restraining order and preliminary injunction alleging that the account was “spreading dangerous misinformation,” and that the unauthorized use of ASU’s trademarks not only harmed ASU, but if not enjoined, was likely to endanger the health of the university community. Similarly, larger medical supply manufacturer 3M has been granted injunctive relief against numerous product counterfeiters using its trademark to price gouge on protective masks. Microsoft was granted the same amid COVID-19 due to computer hackers using its name and trademark to phish for customers’ personal and health information.
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