When you think of a “trademark” you may think of a logo (Apple’s apple logo) or a product or service name (Forbes). You may even assume that trademarks are only a concern for internationally famous brands like fashion companies (Prada) and fast food (Pizza Hut).
In reality, trademark protection extends further than logos and can cover everything from sounds (the 20th Century Fox Fanfare before the opening movie credits), to colors (the “green” on a John Deere tractor), to the design of a taco shop.
Although many of the common examples you hear about are large corporate brands, understanding trademark protection is just as important for startups, independent creators, and small businesses. So what do trademarks do? They protect consumers from confusion regarding the source of products or services. As your business grows, trademarks become a significant asset because they are the way consumers identify and relate with your company. You also need to know how and when your business can use the trademarks of other companies.
In this piece, we’ll break down one of the 4 main types of intellectual property (trademarks) and explain:
- What trademarks protect;
- How trademark protection is granted;
- Whether registration is required,
- When you should apply for it, and if you’ll need help from an attorney to it;
- How long that protection lasts;
- What rights you are granted if you do qualify for protection.
The most frequently asked questions about trademarks
If you come away with nothing else, you should know two things…
- Trademark laws can protect your brand, logo or slogans but it takes some work to get these rights, and their primary purpose is to protect consumers from confusion.
- You should carefully choose your trademark, because there’s nothing worse than building up a bunch of good will in a trademark someone else was already using.
What do trademarks protect?
Trademark law is intended to protect consumers from confusion related to a product or service’s origin. In other words, when a customer picks up a can of Coca-Cola, trademark law ensures that they’re getting actual Coca-Cola instead of water with brown food dye from a company attempting to take advantage of consumers.
But trademark protects more than just names; it also protects logos, emblems, and characters. Trademark law also protects “trade dress,” which is separate from logos and symbols and protects the physical appearance of the product or service. For example, trade dress may cover the shape, look and feel, or color scheme of a product if it is associated with a specific company.
Unlike copyrights, which attaches to creative works regardless of whether or not they are “monetized,” trademark protection only attaches to a product or service being sold/marketed to consumers.
How is trademark protection granted?
To have a trademark, you typically first need to use whatever mark you’re trying to gain protection on in relation to the sale of goods or services. From there you have two options
(1) Continue to use the mark as a way of getting trademark protection ( which is known as “common law protection”), or
(2) Formally apply for trademark protection at the US Patent and Trademark Office (USPTO). Since registering your trademark costs money and will likely require hiring an attorney, it’s important to know what the benefits of registration are.
Here are the top three benefits:
- National Protection. Without a federal registration, you only get trademark protection in the specific geographic areas you sell your good or service. This can be particularly important for online creators who need national protection and don’t want to prove all of the places their goods or services are sold.
- Proof that the mark is yours. By registering the mark, you get an official government record that says that you are the owner of the mark and when you started using it. This can come in handy if you ever get sued and need to prove that you own the mark.
- Easier Licensing. It is much easier to draft a license for others to use your trademark if it is registered. It also helps assure those wishing to license your trademark that it actually belongs to you.
When should you register your trademark?
You should register your trademark as soon as you start selling the product although you can also file an “intent to use” trademark application to reserve the mark before you start selling your good or service.
Keep in mind registration can take a while, so it’s better to start the registration process sooner rather than later. Certain steps of the process, like searching to make sure no one else has trademarked that name or is already using it, should be done as soon as you have an idea of what you’d like to trademark.
There’s nothing worse than building up months of goodwill, then getting a nastygram on the day before you launch letting you know that the name is already in use and you have to stop selling your product.
Can you register for trademark protection on your own, or do you need a lawyer for that?
You should always have an attorney register your trademark. An experienced trademark attorney can do a more thorough trademark search to make sure your mark can be registered, and can help you clearly identify the types of services the mark protects.
Using a trademark attorney up front means:
(1) Fewer disputes down the road,
(2) An easier path to getting registered, and
(3) A greater chance you’ll win disputes down the road.
The Trademark Office you register with actually assigns a real-life human attorney to review each new application. These lawyers are tasked with finding reasons to limit or deny your application. This is not something to DIY or use an automated service. Having an attorney who is a trademark registration expert is critical, and will help you avoid undue delays, registration errors, unnecessary rejections and added expenses.
How long does trademark protection last?
If you don’t register your trademark your trademark protection can last indefinitely provided that:
(1) You’re still using it on your products or services,
(2) It doesn’t become generic, and
(3) No one else using it challenges your mark.
If you do register your mark your trademark protection can also last indefinitely provided that:
(1) You’re still using it,
(2) It doesn’t become generic,
(3) No one else using it challenges your mark, AND
(4) You renew your trademark every 10 years.
What rights do trademark owners get?
Trademark gives you the exclusive right to use your mark in connection with a very specific set of goods or services either based on your current use or the categories in which you register your trademark.
For example, let’s say you register the term Hipster Owl for your band. Depending on how you registered the mark, you would likely be able to use Hipster Owl in connection with your band and your merchandise.
But let’s say an entrepreneur wanted to name their restaurant Hipster Owl Ramen Shop. Your trademark likely would not prevent them from opening the ramen shop because they are in a completely different category of business. It also seems unlikely that someone would confuse a band with a ramen shop.
Ways to move forward
Congratulations! You now know the basics of trademark law. We hope you can use this as a springboard to learn more about how trademarks can add value to your company and protect your business’s goodwill.
This article was written by Art Neill from Forbes.