Imagine spending so much of your time, energy, and capital in building up your clientele that your brand becomes a household name. Imagine further that after exerting all of your efforts, a third party is now claiming interest in your logo design because they were the first to use it in commerce. I imagine that this might make you extremely anxious and nervous considering that you would now have to expend more resources either re-branding or purchasing the logo design from this third party. So what is it that you can do to avoid this kind of mishap, you ask? The answer is simple: register your logo as a trademark!
What today’s blog will focus on is defining the concept of trademarking, explaining the benefits of registering your trademark, and providing you with additional considerations you should think of when you decide to register your mark.
What is a Trademark?
One of the most common questions that I get from my clients is, what is a trademark? So to start, lets define what a trademark is. A trademark is a type of intellectual property that may consist of any word, name, symbol, or design (or any combination of these things) which is used by consumers to identify and distinguish the goods/services of one business owner from the goods/services of another business owner. Think of it in terms of the logo that helps you to identify a pair of sneakers that were developed by Nike rather than the logo that helped you to identify a pair of sneakers made by Adidas. Essentially, trademarks protect consumers from confusion as to the source of goods and or services. A trademark accumulates its rights through actual use in the marketplace (or rather what legal parties refer to as “Commerce”). This means that a business may acquire rights in a trademark and grow its value, without being required to register the mark, simply by using it in commerce. The jig is, you have to be the first to use it in commerce!
Why should you register your Trademark?
I’m sure your next question may be, “well if I can acquire trademark rights in a logo by being the first to use it in commerce, then what is the point of registering the trademark?” And my follow up question to you will be, how do you know that you are actually the first person to use this mark in commerce? Unless you have access to research every single channel of commerce, I think it is somewhat improbable that you can know for sure that you were the first to use the trademark. Registering your trademark helps eliminate some of this concern. More benefits of trademark registration are as follows:
Benefit 1: Registration of a Trademark Provides Constructive Notice to the Public
What this means is as long as your trademark is registered with the United States Patent and Trademark Office ("USPTO") no one using the mark in the U.S. after the date of registration can claim they weren't aware of your ownership or use of the mark .
Benefit 2: Registration of a trademark creates a legal presumption of exclusive ownership and a valid mark entitled to protection
Before you can succeed in a suit against a third party for infringement you must first prove that your mark is valid and entitled to protection. So essentially registering your trademark with the USPTO helps your case in any claim for infringement against a third party because you now have one less element to prove in the claim.
Benefit 3: Opportunity to bring an action in federal court
Because U.S. trademark law is mainly governed by federal law, you will have an opportunity to bring suit in a federal court, which many believe to be a more favorable forum for resolution of their claims.
Additional considerations before registering your Trademark
1. Is your mark capable of registration?
I would caution anyone in assuming that they know the answer to this question. Evaluating the strength of your mark is not as easy as it sounds. Not only will you need to know the differences between generic, descriptive, suggestive, arbitrary, fanciful, and coined marks, but you will also need to know what factors are relevant in conducting research on the USPTO database. This is why it is strongly encouraged that you use an attorney for trademark registrations. Not only will an experienced attorney know what to look for when evaluating whether your mark is capable of registration, but they will also offer strategic advice on what can be modified to increase the likelihood of registration.
2. What are the costs of registration?
Trademark registration can be a bit pricey. In addition to a filing fee of $225.00 - $275.00 per registration class per trademark, the services of an experienced trademark professional can cost between $200 - $1000. While services of an experienced professional can be an added expense, their services are fully worth you not wasting $200 plus dollars for an application to be denied by an examiner or potentially losing out on the added protections of federal trademark registration.
3. How long does it take to complete the registration?
Trademark registration can be a lengthy process and it can take between 12-24 months (depending on the oppositions) before a certificate of registration is issued. You should be sure that you are absolutely invested in your brand because the registration is not an easy feat.
So do you think you should you register your trademark? My classic response to this question would be, it depends! If you see the value in you brand and are invested in protecting your most prized business asset, aka your brand, then my answer would be yes! Yes you should register your mark!