Should Your Business Get a Trademark?

As a business owner, you’ve probably heard about protecting your trademark, but you might have some questions. Maybe you are unsure what a trademark actually is, or how to choose one. You might also be wondering if a registered trademark is really necessary, especially for small businesses. Obtaining trademark registration is an essential part of starting a business, and it’s valuable for individuals with a single product, small and medium businesses, and even large corporations. Read on to learn more about trademarks and the importance of trademark registration.


What Exactly is a Trademark?

A trademark is a form of intellectual property that protects anything that represents your brand in the marketplace. A typical business has several trademarks, including business and product names, slogans, logos. A trademark can even be a signature color, smell, or sound that consumers would identify as representing a particular product or service. Once you identify which trademarks are valuable to your business you can protect your trademark rights by filing a trademark application with the USPTO. If approved, you will receive a trademark registration certificate and you will be the presumed national owner of that particular trademark.

Should Your Business Get a Trademark?

What Makes a Strong Trademark?

The right trademark will help your business stand out in a crowded marketplace, so it’s best to take time to choose the best one. Generic or descriptive marks, like “Bagel Shop” or “Hot Pizza,” are considered weak and will not be approved by the United States Patent and Trademark Office, or USPTO. Trademarks featuring surnames will also have a challenging time seeking approval for their registrations. Often five years of consecutive use and documentation showing consumers associate the name with the business are required before a surname will gain approval.

Suggestive marks offer stronger protections. Rather than describing the products or services offered, they hint at it. One successful suggestive mark is YETI, which doesn’t directly describe the coolers and cups the brand offers, but suggests that they are associated with something cold. While the benefit of a suggestive mark is that it offers some insight into the product or service offered, it may not be strong enough to avoid confusingly similar marks in the marketplace.

The strongest marks are arbitrary or fanciful. Arbitrary marks include words with a common meaning that have no relation to the products or services being offered. Amazon and Apple are both well-known arbitrary marks. Fanciful marks are completely made up, or invented, like Nike, an extremely successful trademark. While the likelihood that a similar business would use the arbitrary or fanciful marks is small, their use often requires additional marketing so that consumers understand what the mark represents.


Benefits of Trademark Registration

A registered trademark provides valuable protections to individuals and businesses of any size. First and foremost, a registered trademark provides protection from infringement. The day you submit your trademark application to the USPTO will become your priority date, and anyone looking to file a confusingly similar mark after that date will likely be rejected by the USPTO. Once your registration has been approved, you will have the right to take legal action against anyone infringing on your mark, whether knowingly or unknowingly. As long as you use the mark as it appears in your trademark application, you’ll be less likely to infringe upon other businesses as well.

Registered trademarks provide additional protections against counterfeiting. The Lanham Act prohibits others from using your mark on their similar product and allows you to take legal action against those that do so. Once your mark is registered with the USPTO, you can also register with U.S. Customs and Border Patrol. They will then seize counterfeit goods that have your trademark. Online sales platforms like Amazon have also begun to offer counterfeit protections for registered trademark owners.

Porshe trademark

Porshe trademark

Without trademark registration, your marks will only be protected in the small geographic region where your business is based. If expansion is in your plans, either soon or in the future, you may not be able to use your mark in other areas if a business there is already using a confusingly similar mark. A federally registered trademark, on the other hand, will provide the presumption of validity nationwide, and you’ll be free to do business anywhere in the country without concern for infringement.

A registered trademark is a valuable asset, as well. Unlike equipment or business vehicles that will lose value as soon as you begin to use them, the value of a registered trademark will actually appreciate over time as your brand sees more success. It can be bought and sold just like any other asset. In fact, a trademark registered by the USPTO is often a requirement for investors or others looking to buy your business in the future. It may also earn your business additional income in licensing agreements.

While your federally registered trademark offers many benefits, your mark will only be protected within the United States. If you sell your product or service outside the U.S. or if you manufacture your product in another country, you should strongly consider seeking international registration. Fortunately, filing for U.S. trademark registration is the first step in obtaining international trademark protection. Once you submit your application to the USPTO, you can then submit an application directly with other countries’ trademark offices, or you can use the Madrid Protocol, an international trademark registration system that allows you to submit a single application in your home language that can then be applied to over 90 member countries.


Steps to Register a Trademark

Once you’ve narrowed down your list of potential trademarks, you can begin the first step in the registration process: conducting a comprehensive trademark search. The purpose of the search is to find any confusingly similar marks that may already be in use. If you find a mark that could cause a likelihood of confusion in the marketplace, you may need to select a different option or go back to the drawing board. However, when you determine that your potential mark is available for registration, you can start to draft your trademark application.

In drafting your trademark application, you will need to select the trademark classes that represent the goods or services you plan to offer under your trademark. You’ll also need to provide a trademark specimen, or sample of how the trademark will be used. For example, if you are registering the business name of your spa, you could include a brochure including the business name and a list of the spa services you plan to provide.

Throughout the registration process, you may receive Office Actions issued by your examiner at the USPTO. Office Actions are issued for a variety of reasons, including requests for additional information or clarification. You may also receive an Office Action if an examiner determines that the trademark cannot be approved as it appears on the application. If you receive an Office Action, it’s important to respond appropriately and before the deadline, which is typically six months from the issue date. Failing to respond to the USPTO within that time period could result in rejection of your application.

Once your trademark application has been approved by the USPTO, you can maintain your trademark protections indefinitely, as long as you continue to use the mark exactly as it appears in the trademark application and you meet renewal deadlines. For new trademarks, the USPTO requires renewal between the fifth and sixth year, then again between the ninth and tenth year. After that, you will need to renew your trademark registration with the USPTO every ten years in order to maintain ownership.


Engaging a Trademark Attorney to Assist in Registration

The process to register a trademark is detailed and time consuming, which can pose a challenge to busy entrepreneurs. Rather than focusing your attention to trademark law and USPTO deadlines, engage an experienced trademark attorney to assist you. Your attorney will conduct a thorough search to determine if your desired mark is available for registration, then draft your application to include the correct trademark classes and specimens. Your attorney can even respond to non-substantive Office Actions on your behalf, all while you remain focuses on growing your business.

Not only will partnering with an attorney take some stress off your shoulders, it’s likely to increase your chances of approval as well! A study by the University of North Carolina found that trademark applications filed with the assistance of a trademark attorney were up to fifty percent more likely to be approved by the USPTO.


Protect Your Business Through Trademark Registration

A registered trademark is a small investment that offers valuable protections for your brand. When deciding what aspects of your business to trademark, consider anything that represents your brand in the marketplace, including business names, product names, logos, and slogans. Ensure that your marks are strong, rather than generic, so that they will not only be approved by the USPTO but also help you stand out in a crowded industry.

When you are ready to register your trademark, engage an experienced attorney to conduct a comprehensive trademark search and assist you in drafting your trademark application. Your attorney will help the process to run smoothly while you remain focused on your business. Once your registration as been approved by the USPTO, you’ll have the presumption of validity nationwide, and you’ll be able to take legal action against potential infringers. As a registered trademark owner, you can register for added protections on sites like Amazon as well. While your business grows, the value of your trademark will grow along with it. Begin the process to register your trademarks today.

Josh Gerben

Josh Gerben is the founder of Gerben Intellectual Property, a full-service intellectual property firm, with physical locations in Washington, DC, Philadelphia PA, and Miami, FL. Josh and his team offer trademark, copyright, and patent services. Since 2008, Gerben IP has secured over 6,000 trademark registrations for clients and has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, CNN, and more.

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