- Posted on: Mar 3 2021
By: Saarah Khan
So, you’ve taken the leap. You’re starting a business. Congrats! You’re excited; you’re ambitious; the world is your oyster. Perhaps you’re building an app, or maybe a new clothing line? Or maybe you’ve created an animal language decoder so we can once and for all figure out what our dogs are saying to us. Whatever it is, it’s sacred to you because it’s yours—you created it. So where do you go from here? How are you going to protect it? How are you going to make sure everyone knows this product or service is uniquely yours?
Let’s talk about trademarks. What are they? Are they worth your time and money? Do you even need one?
First off, a trademark is any name, logo, symbol, slogan, or “trade dress” (including shapes, scents, moving images, and sounds) that can be identified by consumers as representing your business. You can always protect a properly used trademark in your actual market, and you can file for additional state and federal level protection. The reason this “protection” is valuable and necessary is because the identity of your brand should not be used by anyone other than you, and if you apply for the federal level protection in the U.S. Patent and Trademark Office (“USPTO”), you can get the “gold standard” of protection because you are letting everyone in the U.S. know that the trademark you are filing belongs to your business! Whether the reason is unfair competition, negatively affecting your reputation, or reducing your sales, a federal trademark registration would both deter and help alleviate these issues. This also includes any variation of your brand name that consumers would think belongs to you because the mark is similar and used with similar or related goods/services. Trademarks can quickly become overwhelming, but an experienced attorney can help answer any questions or concerns you may have.
For example, imagine that you’ve chosen the name “Man’s Best Friend” for your new company/ device. If someone chooses to make a knock-off version, they would not be able to use your name for sales, or anything similar to it; “Man’s Best Companion,” “Our Best Friend,” or anything that could confuse the general consumer into thinking that your brand is associated with this other version.
Secondly–cost and time. Protecting your brand is important, as we just discussed. But what are you willing to do to protect it? Spending thousands of dollars seems unfair and out of reach for a new business owner. Luckily, filing a trademark is quite affordable compared to the cost of dealing with an infringer! The United States Patent and Trademark Office charges $350 per class. Classes (or classifications) are just what they sound like- a numerical classification system that the USPTO and many other trademark offices around the world use to help “classify” your product or service mainly by its channel of trade, such as food service, apparel, consulting, software development, and the like. This helps the Trademark Office examine trademark applications and businesses to search for the marks that are most relevant to them so they can avoid a mark already in use. Your business can fall under one or more classes depending on how broad or focused your business is. Each of these classes is $350 (so the broader the business, the more you pay because your mark seeks more protection). This additional cost makes sense in the long term because if you are successful in registering your mark, your registered mark will appear in a database of the USPTO and show up in other businesses’ trademark searches in each class that it covers, so competitors know not to use a mark similar to yours or if they do, they will be in more trouble for deliberately infringing your mark. Of course, these fees will fluctuate depending upon if you’re using an attorney (highly recommended) to help you register your mark. Even at the more expensive end, a trademark application with attorney assistance covering one class of goods/services might cost about $1,500 to $2,500, whereas trying to stop an infringer without a registration might cost ten times those amounts or more. That’s WORTH IT to protect your brand, company, and creativity.
Finally, do you need a trademark registration? Do you even qualify? The answer to “do you need one” is essentially the same as “do you find value in your brand?” “Do you want to be able to prevent someone else from using your brand?” “Do you want someone else to be able to take your brand name and profit off of it?” I will go ahead and assume your answers are yes, yes, and absolutely not. I think we should move on to whether you qualify.
No matter what your business is, the idea of a trademark is that it needs to be unique and creative so the mark can clearly and specifically be recognized as referring uniquely to your business. This means that you cannot use generic or diluted words and phrases. So if you’re a purist and you want to get straight to the point with what it is you’re selling, prepare yourself for a rejection from the Trademark Office. You cannot use “merely descriptive” words. Merely descriptive words are exactly what they sound like – they describe something about the business! For example, if you’re a personal trainer, you cannot call your lessons “health and wellness training” or anything that would be clearly refer to an aspect of the service. The reason for this is that it inhibits competition. Words such as “training” and the combination of “health and wellness training” are words that would be very commonly used in the field of fitness, and gyms and trainers would need to use these words to describe their function. Moreover, if a lot of trainers need to use and will use “health and wellness” to describe their training services, how will customers know to associate “health and wellness” uniquely with your training service? Basically, the idea is to be creative! Other words that aren’t good marks are people’s names and identities without the permission of those people, geographical locations, and, of course, those marks that are already in use or registered as a mark! The best way to find out where your mark stands is to do a risk assessment by searching the availability of the mark. This is usually the first step in any trademark application. A risk assessment is a comprehensive search of all registered marks in the USPTO and ideally marks registered at the state level or not at all registered. The search gives you a good idea of how likely it is that your mark is able to be registered or how likely it is that your application might get rejected because the search could identify existing marks that are similar to yours or marks that are common and lack distinctiveness. Do not skip this step! Though optional, skipping this step is the same as filing blindly and risking later on getting slammed with all kinds of legal fees trying to jump through hoops to prove your mark is not going to infringe on someone else’s or that your mark is distinctive. The search is another good reason to go through an attorney because properly searching a trademark is an art that trademark attorneys are well-trained to do! Remember, marks and their goods/services do not need to be exactly identical to be considered confusingly similar, and trademark attorneys are good judges of when the similarity of the marks might cross the line into infringement. If you decided to file a trademark, hiring a trusted attorney can be beneficial in guiding you on the journey ahead.
Whatever direction you choose to go with your business, a trademark should be seriously considered. It can save you a ton of time, money, and grief from legal battles in the end. Protect yourself, your business, and your creativity. Good luck!
If you need assistance with the trademark process, the experts at Dunlap Bennett & Ludwig are ready to advocate for you. To learn how our team can help, contact us by calling (800) 747-9354 or emailing firstname.lastname@example.org.
To learn more about trademarks, visit our Intellectual Property: Patents, Trademarks and Copyrights page.
About the Author
Saarah Khan is an associate at Dunlap Bennett & Ludwig. Saarah is from Texas and moved to Massachusetts to attend law school. She ended up loving the area and stayed to attend New England Law | Boston. She was also apart of the Intellectual Property Law Association, where she discovered her interest in IP law.
To learn how Ms. Khan can assist with your legal needs, click here.
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Posted in: Trademark