Should I Register My Trademark?

Brand recognition is crucial for today’s businesses. Logos and other distinctive marks help consumers identify one business from another. It’s essential for your business to protect these marks. Otherwise, a competitor may be tempted to use them, confusing consumers and taking business away.

Because they identify and distinguish a brand, trademarks are important for entrepreneurs and small business owners to consider when establishing their company name. For legal help with trademarks, reach out to a trademark law attorney.

What Is a Trademark?

A trademark is a distinctive symbol, image, word, design, or combination thereof that represents a company’s brand or product. It must be distinctive to be capable of ownership and to identify a particular brand. 

“Trademarking is about name recognition and allowing consumers to know where their purchase of a good or service is coming from by knowing a brand,” says Rory P. Pheiffer, an intellectual property lawyer at Barnes & Thornburg in Boston, Massachusetts.

“If someone knows a brand and makes a purchase from that brand, they have an expectation of what they’re going to get when they make that purchase. Trademark law provides a way for consumers to be protected, to know that what they are purchasing is tied to a particular manufacturer or offeror of services, and that they are getting in return what they’re attempting to purchase,” he says.

Under common law, you can establish your rights to a trademark simply by using a logo, name, or phrase connecting to your brand. But this right applies only within the geographic area in which your business operates. If you conduct business online or plan to expand beyond your region, nationwide trademark protection requires that you register your trademark with the United States Patent and Trademark Office (PTO).

“If you have a trademark that’s not registered, you have rights when you use the mark, but if you apply to register it before anyone else uses and/or applies to register it, you have rights throughout the United States,” says Rob Hassett, an intellectual property attorney with Hassett Law Group in Atlanta.

Common Law vs. Federal Trademark Rights

Common law is the set of rules derived from judicial precedents rather than statutes. Common law recognizes trademarks as a use-based intellectual property, says Pheiffer. This means that by actively using a trademark, you establish your ownership of it in the minds of consumers.

The practical result is that getting a trademark can be as simple as using a symbol or logo for your business. You can use the TM symbol to indicate to the public that you are using the phrase or logo as a trademark.

There are a couple of benefits of the use-based approach:

1. It’s quicker and cheaper
2. You don’t have to go through the trademark registration process
3. You don’t have to pay application or renewal fees

However, there are significant drawbacks as well:

1. Your legitimate use of the trademark is limited to the geographic area in which you started using it.
2. If someone in another geographic area starts using a similar trademark, you won’t necessarily be able to stop them from using it.
3. Generally, it will be much harder to enforce your rights with an unregistered trademark.
4. If someone with a similar trademark registers their trademark, they can stop you from expanding your business, though you may retain limited rights to continue using the mark in your original geographic area if you used it first.

Because of these risks, it generally makes sense to register your trademark and get the legal protections that come with registration. Furthermore, the costs of registering a trademark are relatively low. According to Pheiffer, filing fees generally cost around $300 (exact costs depend on the type of trademark you file for), while lawyers typically charge anywhere from $800 to $1,000 to help with filings.

Speaking with an experienced lawyer about your situation is important. Registration may not be necessary in your case. But to get peace of mind that your trademark will be protected, seek legal counsel.

Key Benefits of Federal Registration

Registering a trademark with the USPTO gives trademark owners certain exclusive rights and legal protections that unregistered marks wouldn’t otherwise have:

• Exclusive rights to the use of the mark
• Notifies the general public of your ownership of the mark
• Makes your trademark rights enforceable in the federal court system
• Enables you to bring a lawsuit against others for trademark infringement if they use a similar trademark symbol or a similar name
• Record your registered mark with U.S. Customs and Border Protection to stop infringing products from being imported into the country.

After five years of continuous use and filing of a required declaration, your registered mark can become “incontestable,” making the registration harder to challenge. In addition, having a registered trademark can help to establish the strength of your business in the eyes of potential investors.

A registered trademark can act as a deterrent from infringement. Registering signals to the public that a business is prepared to legally protect its intellectual property.

The Right To Sue in Federal Court

A recognizable brand name is a valuable asset for startups and established businesses. A business that discovers another party using its trademark will want to act promptly to stop the infringement and protect its interests. They can seek a remedy by filing a lawsuit against the offending party. The Lanham Act is the primary federal statute that governs trademark law in the United States.

Trademark holders have the right to seek an injunction to stop infringing conduct. They can also seek damages for lost profits and the defendant’s profits. In cases involving counterfeiting or willful infringement, they may also seek statutory damages and attorneys’ fees.

Plaintiffs may bring their lawsuit in federal court, though they usually must file in a state where the defendant resides or where the infringement occurred. This is especially helpful when dealing with online infringers or businesses operating in multiple states.

Having a registered trademark creates a legal presumption of valid ownership. It reduces the burden of litigation on the plaintiff when compared to only relying on common law rights. Registration doesn’t guarantee a “win,” but makes prevailing in court easier.

The Trademark Registration Process

Federal trademark registration begins with the creation of a unique mark. It could be a designed word, symbol, or other form of art. It needs to be distinct. If it is too generic, it’s likely that the trademark application will be rejected. A strong trademark clearly identifies your business. The stronger a trademark is, the better you will be able to legally protect your trademark. Before applying, do a trademark search. This due diligence ensures no one is already using the trademark. An attorney can assist with this. They have experience with trademark searches.

To start an application, create an account on the USPTO.gov website. Complete the trademark application. Pay the filing fees. During the trademark process, the examiner will likely have questions. It’s crucial to promptly respond to them. Upon approval, the USPTO will issue a notice of approval and a certificate of registration. Once your trademark is registered, you can upgrade from the TM symbol to the ® symbol to indicate that your trademark is federally registered.

When you file for registration, your trademark will be assessed for its distinctiveness, based generally on four categories:

Generic

Generic terms and common descriptions may not be trademarked, but may be used freely by anyone. Occasionally, words that began as trademarks can be so frequently used as to become generic, such as “aspirin” or “escalator.”

Descriptive

Words that simply describe a product will not be granted trademark protection unless it can be shown that they have become associated with that brand over time.

Suggestive

Words or images that create an association with the product can constitute a strong basis for trademark protection. A commonly cited example of a mark that requires consumer imagination is “Coppertone,” which suggests, but does not describe, suntan lotion. The line between descriptive and suggestive marks can be somewhat fuzzy.

Arbitrary or Fanciful

Words that have meanings distinct from their use in a trademark context or that are completely made up have the strongest trademark protection. For example, an arbitrary use would be “Apple” computers (apples have nothing to do with computers). “Kodak” is fanciful (not a word).

Selecting a Trademark

When you select a trademark, making it unique can go a long way. “If you pick a mark that’s generic — like ‘cars’ for a car dealership — you can never earn the rights for that mark,” Hassett says. “If you pick a mark that’s descriptive — like ‘good cars’ — you can earn rights only by using it long enough to make the public know about it and associate it with your goods and services. But if anyone used it before you made it distinctive, they’re grandfathered in and can continue to use it. So you end up with a mark that’s not very helpful. Think of all the vitamins that are called ‘natural this’ or ‘natural that.’ Can you think of a more worthless mark? Fanciful are the easiest to protect.”

The Registration Process If Your Trademark Filing Is Denied

If your trademark is rejected for registration, it is usually because it is either descriptive or confusingly similar to another registered or unregistered trademark. You can increase your chances of having your mark approved by conducting a search of the USPTO trademark database before submitting your application. 

Rejection of your registration doesn’t automatically mean you must stop using your mark, but if the rejection was due to confusion with an existing registered mark, continuing to use it carries a high risk of being sued for infringement.

While specificity and uniqueness can help your trademark, Hassett recommends caution with logos or drawings. “The drawback is, if you register a design mark and that changes, you’ll lose your registration when it comes up for renewal. You’ll have to file a new one all over again,” he says. “I try to ask my clients not to be tied to designs unless they need to for strategic reasons.”

State Laws and Legal Advice

While trademark protection is primarily based on federal law, states have their own trademark registration systems. There may also be additional claims under state unfair competition laws, such as misappropriation.

“It takes something like four weeks to register a mark in Georgia, where in the U.S. Patent and Trademark Office, it can take 10 months or more. It’s much better to have a federal registration, but a state registration can give you some advantages. For instance, complying with business opportunity laws is much easier in Georgia if you have a registered mark. … A state registration doesn’t give you rights by itself—the only thing that does is applying to register for it [federally] or using it—but it can be beneficial.”

When To Consult a Trademark Lawyer

For help with establishing and enforcing your trademark rights, talk to a trademark attorney. Hassett likens the process to doing your own taxes. “You’re probably not going to get it all right, but you might get enough right. There are a lot of rules and strategies that go into this.”