Does your business need a trademark?
This post is so incredibly special for a couple of reasons.
- We get to announce that our name is now officially trademarked!!! I’ve never been so excited to see the ® symbol in my life!
- Our brilliant trademark attorney, Paige Hulse, shares all of the legal details on trademarks.
For business owners, the business is often our largest asset, and it’s critical that we stay educated on relevant issues. I have been fascinated to learn that even small businesses and local organizations can get into hot water over a trademark. My hope is that you will use this information to decide whether you need a federal trademark to protect your business or not.
Types of Trademarks
TM – Common law trademark
Common law trademark rights are established simply by using the mark in commerce. There are no forms to complete or actions to take. It’s effortless to obtain, but enforcement of protection of those rights is extremely difficult.
“In short, the holder of a common law trademark will only have rights in their geographical area, in their specific type of services/goods. However, these rights are not presumptive; meaning, if you want to protect your common law trademark, you will have to file a lawsuit to do so. Even more important: someone who successfully registers their trademark with the USPTO has superior rights to a common law trademark, meaning they could legally force a common law trademark owner to stop using the name,” Paige says.
® - Registered trademark
“When you register a trademark with the USPTO, you own the trademark. In other words, generally speaking, you can’t be forced to change your name, and you’ll be able to stop potential infringers from using the same name, logo, etc.,” Paige says. “Registering your trademark provides you with the strongest trademark protection available in the United States. Namely, this type of registration provides a legal presumption of your ownership of the mark, and exclusive right to use the mark throughout the United States on or in connection with the goods/services listed in the registration. In essence, it means that you are the presumed owner of the trademark in all 50 states. If you are in litigation over the trademark, you have presumed ownership in court, which means less attorney’s fees, typically a shorter proceeding, etc. It is incredibly difficult for any litigation to overcome this presumption, and win in a court battle over a holder of a federally registered trademark.”
Who needs a trademark?
A business that wants to own a brand identifier such as the name, slogan, logo, or even color.
It is important to be thoughtful when applying for a trademark because only what is on the application is covered. Even the tiniest tweaks to a name or logo will mean the new version is not protected. Paige suggests starting with a trademark on the business name since logos are more likely to change over time.
The process could take 12-15 months.
- A lawyer must perform a due diligence search. (It is not a google search or a USPTO search, so no DIYs here.)
- The lawyer will file the application including evidence the mark is being used in commerce.
- In about 6-8 months, the application will be assigned to an examining attorney, who will try to poke holes in the application.
- If they find issues, they will extend an office action, which means there is an issue of some kind. It could be small like an issue with the address on the application, or it could be large and require a 30-page argument from the filing attorney.
- Once it passes examination, then it goes to the publication phase. It is published in the “Trademark Official Gazette” for 30 days so that anyone who believes their business will be harmed by the trademark may file an objection.
- Once it’s through the 30 day period, then the trademark is official! It will take 1-3 months for the paperwork to arrive in the mail, but you have jumped through all the hoops!
Even if you are far from ready for a trademark, Paige urges everyone working on a new business or new business name to have a legal due diligence search. It is a relatively small investment that could save you thousands of dollars in the long run. Here is a link to her blog post on this topic for more information.
We hope you find this information helpful! We have seen a handful of our clients run into trademark issues, and we do not want it to happen to you!
To start your trademark journey, contact Paige through her website. www.paigehulse.com
Follow her on Instagram too! @paige.hulse.law She shares helpful information and case studies as well as breaks down pop culture trademark issues.
And of course, once you get that trademark finalized, let’s work on some new swag to show off your ®! If you haven’t seen the new products page on our website, you must check it out!