A trademark is one of the most valuable pieces of intellectual property a company owns. Trademarks build brand recognition, protect the originality of your products, and strengthen relationships with your customers. Once you have gone through the difficult process of establishing your brand identity, how do you protect it?
Methods of Trademark Protection
There are basically three methods of protecting your trademark. These include:
Be the First to Use the Mark in Commerce
If you are using a unique and original trademark, at least in your geographic area, you may begin using it in commerce immediately. In order to protect this mark, you may use the ™ symbol, indicating your intention to protect your brand’s name, logo, graphic, etc. You may use the ™ symbol without registering any documents or filing any forms.
This “Use in Commerce” protection explains why so many cities have their own versions of businesses like “Broadway Pizza” or “Downtown Burgers.” If a competitor enters your market, you may be able to prevent them from using a similar trademark based on the fact that you were first in the market.
The “First to Commerce” trademark protection method does not guarantee protection in the event of a lawsuit or other legal action and may limit your business from growing into other markets where existing competitors have similar marks.
Register Your Trademark with Your State Registration Office
Registering your trademark with your state registration office protects your trademark from use by potential competitors within your state. Brands that are registered with the state continue to use the ™ mark. Each state has a different office and a different process for statewide trademark protection, so you will need to contact your state’s office for more information.
Registering a trademark at the state level is faster and more affordable than federal trademark registration and provides more intellectual property protection than not registering at all.
Register Your Trademark with the United States Patent and Trademark Office
A trademark that has been registered with the USPTO has the right to use the ® symbol and has greater protection from similar or competing marks. Registering a trademark includes a lengthy search to ensure that the mark is unique to your company, service, or sector and prevents others from registering a similar mark. Registering a trademark can take years, and each mark — the company name, logo, graphic mark, slogan, jingle, etc. — should be registered individually if you want to protect them.
Registering a trademark does not automatically protect your company from all types of infringement; if you or a competitor seek to expand into a new market, new industry, or new service type, there may be a conflict with existing marks in that arena. Although registration is the best way to protect your brand in the U.S., it is not absolute, so choose your brand and branding materials carefully and consider consulting with a trademark attorney early in the process.
Requirements for Protection
Whatever method you choose, each trademark must meet the following criteria in order to be legally protected from infringement:
- File under your own individual or business name with a physical address. You cannot use a P.O. Box to register a trademark. While this may seem a simple and basic part of the process, trademark registration is a public record that discloses names and physical addresses to the public. If this requirement is a challenge for you, consult with a trademark attorney who may be able to help you assign an agent or third party.
- Have a distinctive mark. Any mark you want to register must be distinctive enough to differentiate it from competing marks. The USPTO is likely to deny registration to businesses with marks that are too generic, like “Food Store” or “Flower Shop,” or that are only descriptive, like “Hot Coffee” or “Delicious Ice Cream.” Marks like Google, which is a made-up word, or Starbucks, which is not associated with their product or industry, are distinctive and easier to protect.
- Use the mark. In order to protect your trademark, you must either already be using it in commerce or have the intent to use it in commerce soon. You can begin the federal trademark registration process with the intent to use, but you will eventually need to use the mark in order to receive full protection.
- You may be required to hire a trademark attorney. Non-US citizens or people based abroad are required to hire a qualified trademark attorney in order to register a trademark. The USPTO recommends that all applicants work with a trademark attorney in order to understand and successfully complete the registration process.
The Costs of Protecting a Trademark
The costs of protecting a trademark can grow quickly. You should complete a separate registration for every aspect of the brand that you want to protect. For example, you will want to protect the simple name (the word itself in plain text), the “special form” name (with brand font and graphic elements), the logo or graphic, a slogan, and other unique brand elements.
You may also need to register individually for very different markets or industries. For example, if you intend to offer video games and light switches under the same mark, you will need to complete the registration process for each class of products.
Each stage in the registration process has associated fees depending on your type of application.
Consider Registering a Trademark Internationally
The Madrid System or Madrid Protocol allows trademark holders in one participating nation to apply for and receive protection through the World Intellectual Property Organization (WIPO). This form of trademark protection is recognized in up to 130 countries around the world, including major economies like the U.S., China, and Germany, granting the broadest international protections through a single process.
For businesses and startups that aim to do business internationally, international registration is an important consideration. The WIPO requires that all registered marks be used within five years, giving U.S. entrepreneurs time to protect their intellectual property while growing beyond their borders.
Maintain Your Trademark
The USPTO has strict requirements that protected marks be actually used in commerce. In order to maintain your trademark, you must continue to demonstrate that the mark is in use in commerce. Five years after your initial trademark registration, you are required to file Section 8: Declaration of Use and/or Excusable Nonuse. Ten years after the initial registration and every ten years thereafter, you are required to file Section 8: Declaration of Use and Section 9: Application for Trademark Renewal. Each of these filings has deadlines and fees.
For companies who have also filed for trademark protection with WIPO under the Madrid Protocol, similar maintenance filings are required.
How Can the Fridman Law Firm Help?
Trademark and intellectual property are complex areas of law, and entrepreneurs should work closely with a trademark attorney from the very beginning of the branding development process to ensure they have the maximum legal protection and are avoiding infringing on existing marks without limiting their brand’s eventual growth. Contact the Fridman Law Firm today for more information on how to protect and grow your brand by calling 212- 262-9823.