By: Matthew Swyers
Registering your trademarks is a critical step in any business’s plan.
Yes, I’m a lawyer. But I promise (Scout’s honor) that you can trust what I’m about to tell you: Your business needs to protect its trademarks.
You may be saying to yourself, “Look at this attorney trying to drum up more business for himself and his brethren attorneys. How original.” But my motivation is steeped in the lessons of life and business rather than self-interest. The simple truth is that most businesses are not protecting the trademarks they have, and they should.
Listen, what’s your business’s most important asset? Your store? You can lease new space. Your website? You can post a new site tomorrow. But how do your customers know who you are? How do they know to look for your goods or services? Ding ding ding–you’re right: They look for your brand, your trademark.
So why haven’t you filed for a federal registration with the U.S. Patent and Trademark Office? Are you just waiting to get into a trademark battle without the assistance of a federal registration for your trademark? If so, allow me to paraphrase Sean Connery from the Untouchables–that’s like taking a knife to a gun fight.
Every day I talk with business owners embroiled in costly litigation. For what? Simply the right to keep their name. Why? Because they didn’t take the steps necessary to protect it. It’s not that they made a mistake, per se. It’s just that they did not know. And that’s where I come in. It’s my job to spread the word so entrepreneurs know what must be done to protect their brands and why.
1. Research and Clearance
The first step every business should take before adopting a new trademark, slogan, tag line, brand or logo is to make sure no one else is using it, or a similar trademark, already.
Perhaps the most common misconception among small business owners is that by making a minor change to an existing brand your proposed trademark is completely different from another (e.g. Nike vs. Nique, AT&T vs. AT&C). This is not the case. Minor alterations or distinctions between brands are often not sufficient and infringement is still likely.
Thus, you must conduct research, or have it done for you, to determine whether your proposed brand is available.
Because if you adopt a trademark that is confusingly similar to another’s brand down the road, after spending thousands on marketing and rolling out your product, you may have to re-brand completely if your trademark is found to be infringing upon another’s.
Thus, do your research early on and avoid this costly mistake.
2. Notice to All
The flip side of conducting research to make sure your trademark is available is filing for protection of your brand so that others can find you when they conduct their own search. In short, filing for your trademark with the U.S. Patent and Trademark Office ensures that all who would use a trademark in the U.S. are on notice of your claimed rights.
As such, by filing to register your trademarks you are taking a critical step in making sure that future infringement does not occur by informing the world that you and you alone own the same and that no one else should adopt a similar trademark to yours.
What happens if you do not? You can still enforce your unregistered trademark against others, but it is more difficult than if your trademark was registered. Moreover, for the relatively low cost of a federal trademark registration it makes sense to take this preventative measure.
3. Start the Clock Towards Incontestability
If the above were not enough, here is one final gem that should inspire all who read this to take action now.
What most people do not know is that even a federal trademark registration can be challenged (e.g., cancelled) under certain circumstances (e.g., if another started use of a similar trademark to yours first). However, after five years of registration a federal trademark becomes incontestable. In other words, once you receive a federal registration for your trademark and once it has been registered for five years it cannot be challenged by another on the grounds that someone else may have earlier rights than you in the trademark.
The value of incontestability for a trademark holder cannot be understated. In short, once your trademark becomes incontestable your ability to enforce it is effectively supercharged as you virtually do not have to worry about an alleged infringer claiming earlier rights in their trademark to yours.
From an enforcement perspective, this is as good as gold.