Trademark Basics: A Few Things
Your Business is Gaining Momentum
Congratulations, you’ve got your business rolling:
Search to confirm that your company name, logo and product name are not being used by another company in the same or similar space
Product developed and tested
Go to market plan
Product released to the world
Marketing roadmap
Buyer interest escalating
Sales happening
Should You Trademark Now—or Wait?
🤔Apply for a trademark for the company name and logo and product/service name?
Maybe you want to trademark your company name and/or product. Maybe you don’t.
A bit of housekeeping:
✨this article presumes you have confirmed that your name/logo was not already used or registered by another in your space.
✨while this article is mostly about applying to register a trademark with the United States Patent and Trademark Office, aka USPTO, there is also the possibility of applying to register a trademark under state law.
Key Questions to Ask Before Filing
Let’s look at some things to consider:
Do you expect the name or logo to have long-term use and you don’t expect it to change – or - not?
Are you expecting to operate in a limited geographically area or expand into new U.S. markets?
Do you plan to expand into international markets?
Are you seeing competitors and the market using verbiage that is very close to your name or logo?
Short-Term vs. Long-Term Value
If a name/logo you are using isn’t really important to the business or isn’t expected to have a very long shelf life, of course you can file to register the name/logo but it may not be worth the time and expense. This involves some “see around the corner” to think about what may/may not seem long term or important today becoming exactly the opposite later.
Common Law Rights: Limited but Real
However, if you expect to use the name/logo as your mothership or flagship product, seriously consider applying to register it as a trademark. If you do not, you could have what’s known as a “common law” trademark and still protect the name/logo but only if you can show you were the first to use it - and - your protection is limited to the geographic area where you operate and locales in which your name or product is known. What this means is that a direct competitor may be able to successfully use your name/logo on a broader scale. However, if your name/logo is registered as a U.S. trademark, you have additional legal rights and have protection across the nation for your registered product/service. If you ever have to file a lawsuit for violating your trademark, whether it is registered or not, the hill is higher to climb ($$$) if you didn’t register the mark and have to establish you have any rights at all.
Advantages of Federal Registration
If you intend to stay in a limited geographic area or market, then perhaps a decision not to apply for a trademark with the USPTO is fine. It might still be a good idea to file an application in the states where you operate, for trademark protection in those states. In thinking how far to go in registering your name/logo, also consider how you plan to get new customers. Are you primarily planning on word-of-mouth so that customers know who you are/what your product is (vs someone else)? If you are planning on internet traffic and online exposure, then registration could be a good idea because, as we all know, the internet can get chaotic when trying to nail down which company has the authentic solution that a customer heard about in a podcast, LinkedIn, Facebook, etc.
Geographic Reach and Online Visibility
If you’re planning to expand into international markets, the need to apply for registration of your trademark escalates. There are also filings to be made on an international level, covering several countries, along with a U.S. trademark. Remember a U.S. trademark only protects in this country, not others. Also, realize that European countries are a “first to file” system, meaning even if you were the first to use a name/logo, you will lose protection of the name/logo in those countries if you were not the first to file to register the trademark there.
When Similar Names Start to Appear
If you are seeing competitors or others in the online stratosphere using verbiage similar to the name/logo that you are using and you believe your name/logo has market/revenue value, then it’s probably a very good idea to prioritize filing to register the name/logo. You could still be subject to another company saying they used the name/logo first but their path to establish that is via an opposition filed with the USPTO and proof of first use, along with some other factors. Not a cakewalk.
Document Everything: Use vs. Intent to Use
You will need to show documentation of all the uses that are included in the description of your product/service in the trademark application. This means the product/service description cannot be the roadmap of wish lists for future use. Future use can be covered by an Intent to Use application but that is a whole different subject.
Conclusion and Disclaimer
There is much more to this subject and the aim here is to provide high level information. Not every scenario is covered, and this article is informational only, not a substitute for legal advice. If you want to talk further, please click the button below.
