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The valuable time that you invested in coming up with just the right creative name and developing the branding and marketing around that company name is impossible to measure. After creating signage, letterhead, and advertising materials the last thing that you want to learn is that another company has sent you a cease and desist letter to stop using your company name. This costly mistake can be avoided by taking proactive steps on the front end to ensure that you have all the rights to use the name you choose through trademark searches and registration.
With this in mind we offer the following guidelines for trademark protection for your business. This is a brief but critical overview of what trademark rights businesses should protect and, most importantly, how.
Often businesses have no idea what should be protected by trademark registration, since it extends far beyond just your company name. Here are a few of the items that you should consider seeking trademark protection for your startup.
First, a small business should always protect its company name. Your company’s name is how consumers, your customers, find you and your goods or services (e.g., Nike, Amazon, Apple, McDonald’s, etc.). Without protection a competitor can open shop under a highly similar corporate name and siphon away business from you by confusing your customers as to the business they are patronizing.
Like your company name, consumers also locate your goods and services through your product names. As such, if you provide a product or a service under a particular name you must also protect the same to avoid competitors from using like names on their goods and services (e.g., iPhone, Wii, Explorer).
In addition, it is not only the names of products that should be protected but logos as well. The Nike Swoosh, the Adidas three stripes, and, of course, Apple’s now iconic apple with a bite are all examples of logos that serve as trademarks.
If you use a particular advertising slogan in connection with the promotion of your goods and services these should also be protected as a trademark. Think of
Often businesses wonder if trademarking is worth the cost and efforts at the early stages. In addition to the potential savings of avoiding a costly rebranding after learning that the name you have been using is trademarked by another company that has sent you a cease and desist letter, here are a few of the benefits of having a trademark registration for your startup.
Having your trademark registered with the U.S. Patent and Trademark Office makes them easier to uncover by those doing trademark searches to see if their own trademark is available to be registered. This, in turn, helps to prevent the adoption of confusingly similar marks by third parties who may not choose a specific trademark similar to yours if they see your trademark is already registered with the U.S. Patent and Trademark Office.
Only trademarks that have been registered with the U.S. Patent and Trademark Office have the authorization to use the® symbol in their advertising and marketing. The right to use the ® symbol in connection with your trademark which, in turn, also deters potential infringers from adopting or using a similar trademark to yours. It is also a great way to communicate that your brand is legitimate and valuable in a crowded field of imposters and cheap knock off brands.
Unfortunately it is a reality that we often have to resort to filing lawsuits to enforce trademarks against infringers that don’t respond to cease and desist letters. When your trademark is registered it increases the type of monetary damages you can demand in a lawsuit if it is later infringed upon such as the ability to recover lost profits associated with the infringement including the possibility of receiving treble damages in certain circumstances as well as recovering attorneys fees. Essentially, having a trademark registration really pays for itself multiple times over.
If your trademark is used in connection with goods this is a key factor. Once registered your trademark registration can be provided to the U.S. Customs and Border Protection that will block the importation of any goods into the United States bearing a trademark that infringes upon yours.
In this digital commerce age where many brands are distributed in online marketplaces like Amazon and eBay, one of the most powerful weapons that you have against counter-fitters and unauthorized distributors is their infringing use of your registered trademarks. With a trademark registration, it is relatively straightforward to provide notice to these online marketplaces to remove the infringing listings in the quickest fashion possible.
If you have yet to begin use of your product or service name it is imperative that you research to see if it is available. A properly conducted research report will let you know if the name you seek is available to be registered before you incur the expense of the non-refundable government filing fees required for registration. Also, a research report will ensure you are not adopting and using a name that is infringing upon another’s trademark. If this occurs, you could be forced to give up use of your name and even pay damages to the entity you have infringed upon, even if done innocently. A research report will avoid these issues and make sure your name is available to use with minimal risk.
You should be leery of any “free” trademark searches. Recall the old adage that you always get what you pay for. The “free” trademark searches are largely marketing ploys that do not provide the quality of search a trademark holder needs to determine whether their trademark is available for registration. As such, they may inform you your name is available to get you to use their trademark registration services when, in fact, their search algorithms fail to discover and advise you of actual trademarks you will be infringing upon if you begin use of your trademark. If this happens, your “free” trademark searches can be very expensive in the long run.
Once you have determined your desired name is available to trademark you should immediately apply to register it with the U.S. Patent and Trademark Office. Since trademark rights can be acquired either when you first use your trademark or first to file for an intent to use the same, it is imperative you get a trademark application on file with the USPTO as soon as possible to secure your rights in the trademark before someone else does.
Now that you have a trademark you need to make sure that no one else adopts and begins use of a confusingly similar trademark. Trademark infringement costs businesses hundreds of millions of dollars each year in lost revenue. Even if a competitor begins use of a similar, albeit not identical, trademark to yours it can still funnel customers away from your business. In essence, competitors create confusion between your and their goods and services by adopting a similar trademark to yours. They then use the good will you have created in your trademark through your marketing and otherwise to steal your customers through use of their infringing trademark.
To stop this before you notice a decline in business regularly monitor your trademark and others’ use of similar trademarks by watching trademark filings before the U.S. Patent and Trademark Office as well as online and through other traditional means.
There are a number of solutions for monitoring online use of your trademark. Seek the advice of a trademark attorney on options available to automate this monitoring process.
Once infringement of your trademark is discovered you must act quickly to stop the same. There are numerous ways to enforce your trademark depending upon how it is being infringed upon. For instance, if a competitor has registered and is using a domain name that is similar to your trademark, a domain name dispute may be the right avenue for you. If a competitor is simply using a similar trademark on their web site to yours than sending them a cease and desist letter or possibly suing them in court may be the best option. Or if they have applied to register a confusingly similar trademark with the U.S. Patent and Trademark Office you can oppose the registration of the trademark through several different means.
Of note, enforcement can be tricky as there are many pitfalls associated with determining first use of a trademark to ensure you are not enforcing against someone who may actually have acquired rights in their trademark before you. As such, seeking the advice of trademark counsel specializing in enforcement is always advised.
For many businesses, their brand is their most valuable asset. Through a few judicious steps in seeking trademark protection, monitoring use by others, and policing infringement, you can ensure that your company brand is secured and flourishes with the growth of your business.
Read a thorough discussion about Trademarks on the next article for a better view on how this works.