Trademarks – Top 3 tips for registering and protecting your trademark

Almost every week, I get calls from clients wanting to understand how or if they can file for a trademark. The following includes the top three things to remember when you are considering this as an option so you can know when or if it is right for you to go down that road.

1.      Your trademark relates to your brand and identifies you.

Generally speaking, a trademark involves a logo, catchphrase, name, or similar “Mark”. You can have a trademark for the entire logo and phrase, or some part of the whole. The end result of a trademark is to be registered with the US Patent and Trademark Office (“USPTO”), which means you can use the “R” with the circle around it: ®. For everybody else, you can use the “TM” which means either you think you have “dibs” on that “Mark” or it may indicate that your application is pending.

            There are rules about what you can and cannot trademark.  Without getting into some boring legal explanation, let me just say that your “mark” needs to be more than a description, and it needs to set you apart from others in the market.  For example, if you own a car wash located in Minneapolis, you would have a hard time registering “Minneapolis Car Wash” because the word itself is very obvious as to what it means and what the business involves.  Images and foreign language words used in logos can increase your chance of success by avoiding this most common hurdle for registration.

2.      When and where are you using your Mark?

Getting a trademark officially registered and approved (at least by the USPTO) can take many months from start to finish.  Plan ahead.  It is even possible for you to file an application for a trademark that you are not yet using in business, but which you plan to use in the future. One of the biggest downsides to registering your trademark is that you can’t see all of the other pending applications unless you have their application number.  This means that it is completely possible that you start an application and somewhere in the middle a prior application gets approved which causes problems for your application which is still pending.  Basic takeaway – file something sooner than later and convert the application later to “Actual use”.

The other area that you have to understand is that your “mark” is limited to the specific “class” where you are using the mark.  There are 41 different classes which include a broad spectrum of goods and services.  Many trademarks are only registered in a single class, while others do a lot more.  This needs to be addressed when planning your application strategy.

Finally, your trademark if registered, still only allows you to stop others from using your mark in locations where your business is reasonably competing.  If you don’t do business in Alaska or Florida, then you would have a hard time stopping someone from using an image close to yours in those locations.  Thank about when and how you want to use the trademark to make sure you’re approaching this the right way.

3.      Do you plan to protect your trademark?

Finally, once you are registered, keep in mind that you may need to protect your trademark and send nasty letters to companies (or even file a lawsuit) to keep them from “infringing” on your rights of a trademark.  There are some laws that make this easier to do after your trademark is registered.  There are also state laws that could impact your enforcement of trademark rights. You will also need to file certain renewals throughout the “life” of your trademark.  Just things to keep in mind.

Conclusion

You don’t necessarily need an attorney to file a trademark, but lots of our clients prefer to have that help.  There are lots of questions that can come up and it can be nice to have someone to ask about these issues. Bottom line, if you have a trademark, you are going to receive “official looking” notices and requests for payment for services that may or may not be required.  When in doubt, call your attorney to check into things.  Here’s to building your brand and registering your trademarks along the way!