For small businesses, a trademark is not just a symbol, name, or logo. It’s a superhero’s shield that establishes the brand’s reputation and identity in the market. It’s also a critical asset that builds customer trust and secures the brand’s future.
Forgetting to protect your trademark can leave your business vulnerable to infringement and fraud.
Successful protection of your trademark is a multi-step process that requires regular monitoring and follow-up, and filing for federal trademark protection is only the first step. Here's an outline of the steps you need to take to secure and maintain your trademark.
1. Choose a strong trademark
The best way to protect your trademark is to choose a strong trademark from the get-go. A trademark can protect intellectual property such as a:
- logo
- phrase
- symbol
- business name
- product name
- product package
- sound
- color
What does a strong trademark mean? Your trademark needs to be memorable, unique, and distinctive.
Having a strong trademark is like having a superhero’s shield for your brand, which makes it easier to protect and defend the brand. The United States Patent and Trademark Office (USPTO) won't register your trademark if there is a “likelihood of confusion" with another registered trademark. A “likelihood of confusion" often arises when two marks are similar, and they are used for similar goods or services.
Other signs of a weak trademark are the use of purely generic and descriptive words and designs and the incorporation of terms similar to existing trademarks. A weak trademark dents your shield as they are difficult to enforce and don’t have the same level of legal power.
Examples of strong trademarks are “Häagen-Dazs” or “Sony.”
Examples of weak trademarks are “Creamy Ice Cream” or “Round Bagels.”
Use these tips to minimize the chance the chances of your application being rejected:
- Avoid using commonly used words and terms like “creamy” for an ice cream brand.
- Stay away from using any word that can create confusion in the customers' minds.
- Choose arbitrary or suggestive terms that don’t relate to the product or service.
- Consider how easy the mark is to remember, spell, and pronounce.
- Think about long-term goals and whether the trademark can evolve accordingly.
- Conduct a thorough trademark search to identify similar marks.
- Consult an intellectual property attorney to understand trademark pitfalls.
2. Register your trademark
So, here’s the thing. When you start selling your goods or services, you automatically get a basic level of intellectual property protection for your logo or name. This is known as common law rights. However, there are some drawbacks, common law rights are limited to your local area. For example, another company in a different location can use the same name for similar goods or services, and you can't take legal action against them.
To give your trademarks stronger nationwide protection, you must register them with the USPTO. When you file and register a trademark, you gain legal protection and exclusive rights to use the trademark nationally. You also get the power to take someone to the courts if they use a similar mark. Another benefit of applying for a trademark is that it allows you to grow your business with a sense of security and confidence.
The trademark application filing process is lengthy and typically involves:
- Gathering all required information
- Selecting the appropriate mark format and defining the scope of use
- Identifying each class of goods or services
- Submitting a completed paper or online application
- Paying non-refundable filing fee
- Replying to any office action notice
3. Monitor your registered trademark
Once your trademark registration is approved, your company can start using the registered trademark symbol, ®. But that doesn’t mean your job is done because the USPTO only registers trademarks. It does not regularly monitor or enforce them—that's up to you.
One way to protect your trademark is to monitor USPTO filings and oppose any new trademark filings that appear similar to yours, which can create confusion for your customer base. Another is to be assertive if you learn of another business using a name or logo similar to your registered trademark. Sometimes, a simple cease and desist letter will stop an infringer, but if that does not work, your federal trademark registration gives you the authority to take legal action and take the party to court.
4. Maintain your federal trademark registration
Just like a superhero’s shield needs some upkeep, the USPTO requires you to maintain your trademark rights. Maintaining the registered trademark requires the filing of maintenance documents between the fifth and sixth year after registration, and then again between the ninth and 10th year. If you miss a deadline, your trademark will be canceled, damaging customer trust and leaving your business vulnerable to trademark infringement.
Use the Trademark Status and Document Retrieval (TSDR) database to check deadlines or set up alerts using your MyUSPTO account.
5. Work with a trademark attorney
Protecting your trademark requires creativity, research, strategy, time, and legal expertise. The USPTO recommends working with an experienced trademark attorney. They can make the process manageable, minimize the chances of your trademark application getting rejected, and ensure that your hard-earned trademark protection lasts as long as your business.
A trademark attorney can:
- Explain the importance of getting a trademark
- Walk you through the trademark application process
- Conduct a thorough trademark search
- Craft an airtight application that meets legal requirements
- Keep tabs on any new trademark applications
- File maintenance paperwork and submit proof of use
If working with an attorney is out of your budget, consider using a trademark registration and search service company like LegalZoom. The majority charge a flat fee to complete the trademark process on your behalf.
6. Consider registering internationally
Trademarks are only enforceable in their country of registration. So, your registered trademark with the U.S. Patent and Trademark Office will work only within U.S. borders. If you want to prevent anyone else in the world from using your brand logo or have plans to expand globally, then you should register for an international trademark.
If you don’t apply for an international trademark, your brand could face losses as a result of counterfeiting and unfair competition. According to Statista, a global statistics portal, clothing brands lost approximately $28 billion in sales due to counterfeiting.
Registering for international trademarks can be done using the Madrid Protocol. Many countries, including Japan, Germany, and China, use the first-to-file trademark method, making it even more important for you to get international protection as soon as possible.
FAQs on trademark protection
What is trademark infringement?
Trademark infringement is any unauthorized use of a protected trademark that's likely to create confusion in customers' minds about the brand, product, or service. One example of infringement could be when a business uses a logo or design mark that appears deceptively similar to yours without your consent.
What does a trademark protect?
Trademarks protect more than a business name or word. Trademark protection can apply to a logo, symbol, design mark, color, jingle, sound, or phrase. Anything that the customers identify with the brand can be protected.
Trademarks don’t protect generic and descriptive words or phrases, geographically descriptive words or phrases, ornamentation, or just a surname.
How long does a registered trademark last?
In the U.S., trademarks are good for 10 years and can be renewed every tenth year if you are consistently using them with the appropriate trademark symbol. To renew your trademark registration, file a renewal application and pay the applicable fees to the USPTO. Don't worry if you miss the renewal deadline, as there's a six-month grace period, but this delay can cost you additional fees. Your trademark rights will get canceled if you forget to file the renewal documents within those six months.
What is the cost of protecting a trademark?
The cost of trademark protection depends on the number of classes of goods or services you are registering for and where you're applying for the trademark. In the U.S., a trademark for a single class of goods or services costs $350.
What’s the difference between a cease and desist letter and a cease and desist order?
A cease and desist letter is a legal notice sent by a business or its lawyer informing another business to stop doing an illegal activity, like using their registered logo. It's a warning that says, "Stop doing this, or else I will pursue legal action." On the other hand, a cease and desist order has more weight and power because it's a court-issued mandate that requires immediate action. Disobeying a cease and desist order can result in hefty fines or court charges.
Jane Haskins, Esq., contributed to this article.
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