Trademark Protection: Three Questions Answered for Small Businesses

When starting a business, it is important to establish brand recognition for your product and/or service.  In establishing brand recognition, it is essential for a company to protect the use of their brand whether it is a name, logo, slogan or any combination of the three.  A Federal Trademark registration is an excellent way to solidify protection of an up-and-coming brand while also preventing a competitor from operating under a confusingly similar name.

Here are a few common questions we have received from clients over the years regarding Trademarks:

1. What is a trademark?

To begin, it is important to answer the most basic question: WHAT IS A TRADEMARK?

Traditionally, a trademark includes any word, name, symbol, or device used by an individual or business to identify and distinguish their goods and/or services, including unique products manufactured or sold and to indicate the source of the goods.  Think: Coca Cola®, McDonalds®, Nike®.  Trademarks may include slogans, three-dimensional objects, product packaging, trade dress, containers, buildings, sounds, smells, or the overall color of a product.

The goal of trademark law is to protect mental associations between a particular product and a trademark used to identify this product in the marketplace, to reduce a customer’s costs of shopping and making purchasing decisions, and to protect consumers from the likelihood of being confused. Broadly, a trademark is a source identifier which creates a mental association between the consumer and your company.

2. Why file for a trademark?

For a small business, it is important to protect a brand for both the company and its consumers. Trademarks provide an incentive for small businesses to inform the public of the nature, origin, and quality of goods provided by their company. It also forces a small business to maintain quality control of a good or service consistent with their goodwill and reputation. For consumers, protecting a trademark reduces consumer “search costs” by creating a mental association between the consumer and the company, thereby limiting confusion.

A trademark can be filed in the state your company is domiciled in, as well as federally. Federal and State trademark law coexist, however, they differ in protection.

Common Law trademark rights, which are state based, provide rights in a trademark depending on where the mark is used geographically, and where it has achieved some mental association with a particular product. There is no registration of common law rights or filing of an application necessary to assert and/or protect your brand. This is customarily shown by the symbol TM.

Alternatively, Federal trademark law is governed by the Lanham Act. The Lanham Act offers the most robust protection and nationwide rights for a trademark if used in interstate commerce. The Lanham Act provides for registration of a trademark by filing an application with the United States Patent and Trademark Office (USPTO).

3. When should I file for a trademark?

When your small business decides on its name, it is encouraged to solidify trademark rights by submitting an intent-to-use application as soon as possible. This intent-to-use application ensures that once the company is ready to use the mark in commerce, the brand will be protected. If your company is already using the mark in commerce, a use application will be filed to ensure that the brand will be protected, as the goods and services are already being used.

Prior to filing a trademark, our firm performs a thorough trademark search through the Trademark Office database. The goal of this search is to determine whether there are other marks similar to your business’s mark.  It is important to be aware that a “senior user” of a mark or logo is deemed to be the first entity that uses the mark in connection with the associated goods/services in interstate commerce.

If there is a delay in filing for trademark protection, a rather small project in the scheme of your business as a whole, could evolve into a costly and drawn out process.  Too often start-up clients, or even larger entities delay filing a trademark application, and as a result several costly issues could arise from this delay.

Simply put: Invest in protecting your brand through a Federal Trademark application and registration as soon as possible to avoid unnecessary stress and costs down the line.