You worked hard to come up with your business idea. You picked your brand name. You incorporated your company. And, you’re ready to take over the world. But wait– If you forgot to trademark your business you’ve put yourself in a very vulnerable position. At any moment someone can swoop in and take your name, your brand identity and everything you worked hard to create.
SBSQ caught up with trademark attorney, Venus Griffith Trunnel to get all the information you need to trademark your business and protect your brand. Mrs. Trunnel, a former Trademark Examiner with the United States Patent and Trademark Office, now specializes in domestic and international trademark prosecution and enforcement at Ivie, McNeil & Wyatt law firm. With the expert advice she shares below, you’ll spend more time growing your business, instead of fighting to protect it.
1. What are the benefits of registering a trademark?
There are many benefits to registering a trademark. First, a Federal trademark registration carries a presumption of ownership and validity of the trademark during the first five (5) years of registration. Second, a registration can be used offensively to prevent others from adopting and using confusingly similar marks. Companies looking to register their trademarks routinely check the USPTO database for confusingly similar trademark applications and registrations and make decisions to adopt and use new marks based on the information in the database. Third, the ® is constructive notice to third parties of your trademark rights. Fourth, a trademark registration gives the owner nationwide rights in the trademark as of the date of filing the application. Fifth, after five (5) years of securing a trademark registration and continuous use of the trademark in commerce, the owner can file an affidavit of incontestability, and the registration becomes conclusive evidence of ownership and validity of the mark. This incontestable status is recognized in Federal courts in the event the owner sues for trademark infringement. Finally, a registration is a valuable commodity and can be the basis of a license to use the mark by third parties.
2. At what point should entrepreneurs consider getting a trademark for their businesses?
As soon as possible. Entrepreneurs should carefully select trademarks for their businesses. Trademarks identify the source of goods and services and represent the goodwill and quality of the goods and services. Although the cost of getting a Federal trademark is relatively inexpensive, the costs to defend a trademark infringement lawsuit or to select a new trademark after making a substantial investment in a new product or service can be quite costly. It is better to identify several potential trademarks, order a search report from a reputable search company and then have a qualified attorney assess the risks associated with each potential trademark. Entrepreneurs can file an Intent-to-Use trademark application which preserves their rights in the mark as of the filing date of the application.
3. Is it mandatory for entrepreneurs to trademark their business name?
Although it is not mandatory for entrepreneurs to trademark their business name, there are instances where the business name, (aka “trade name”) should also be trademarked. Where the trademark and the trade name are synonymous, then entrepreneurs are recommended to trademark their business name. A trade name is the company’s corporate name or the name under which it does business and may or may not be the trademark used for the goods or services offered by the company.
4. What obstacles may entrepreneurs face down the road if they choose not to trademark their business name or logo?
If entrepreneurs choose not to trademark their name and logo; they risk others adopting and using similar trademarks and logos; they risk losing the presumptions of ownership and validity a trademark registration provides; they risk loss of nationwide rights to the mark and being limited to the area where they do the most business; and they do not have the right to use the ® symbol.
5. What’s the difference between getting a copyright or a trademark? And, how can entrepreneurs determine which one is best for their business?
Copyrights and Trademarks protect different rights. A copyright protects the original “expressions” of an idea in a tangible medium such as a book or sculpture or song; whereas trademarks are used in connection with a good or service to identify the source of the same. For example, “ABC Movie Studio” makes feature films for children. ABC Movie Studio would file a copyright application to protect the individual feature films. The Studio would file a trademark application for their name “ABC Movie Studio” to identify the source of those feature films.
6. What can small business owners do if they find out someone else is using their brand name or likeness without permission?
Business owners should seek the services of a trademark attorney for consultation if someone is using their brand name or likeness without permission. An attorney is likely to send a cease and desist letter to the offending business to inform them of your rights and request that they stop such use. An attorney may also file an opposition to a trademark application, if necessary and/or file an action in court to stop any infringing uses.
7. When launching a small business should entrepreneurs pay for a name search, or can they just check uspto.gov to make sure their intended business name is available?
Yes. A name search is always recommended prior to filing a trademark application. It can save the entrepreneur money in the long run as stated above. While it is necessary to check the USPTO database, some businesses may be using the same or confusingly similar mark and may have “common law” rights in the name. (Common law rights in a mark are rights given to the owner of a mark through use of the mark in commerce.)
For example, XYZ Bakery has been operating in California for over 10 years and is well known in the state but has not filed a trademark application with the USPTO. XYZ-1 Bakery wants to open its business in Texas and wants to take their business nationwide. XYZ-1 files a trademark application without a name search. XYZ-1 runs the risk of XYZ filing an opposition to the trademark application and not being able to expand its business into California because of the common law rights in the name owned by XYZ Bakery.
8. What’s the process of trademarking a business name? How long does it take? What’s the average price range?
After completing and reviewing the search report, the next step is to file the trademark application with the USPTO. If the entrepreneur is already using the mark, then they will file a “use-based” application. If the mark has not been used, the entrepreneur can preserve their rights in the mark by filing an “intent-to-use” application. Both applications cost the same amount initially, but an intent-to-use application requires additional fees before a registration is issued.
If there are any problems with the application, then the USPTO will send an Office Action to inform the owner of the problems. Applicants have six (6) months to respond to the Office Action. If all problems are resolved, then the USPTO will approve the application for registration and publish the mark in their Official Gazette to give third parties 30 days to file an opposition to the application. If no oppositions are filed, then the mark will move forward to registration, and the USPTO will issue a Certificate of Registration for the mark. The entire process can take on average from 6 months to 2 years. However, once the trademark is registered the owner can claim priority based on the date the application was “filed.”
The average price range for a trademark varies depending on the costs charged by the attorney for preparing and filing the application. However, the USPTO basic fee for filing an application online is $325.00 per class of goods or services, and some simple online applications may be filed at the reduced fee of $275.00 per class of goods or services. Please check www.uspto.gov for the current schedule of fees.
9. How long does a trademark last? Is there an annual renewal fee to consider?
U.S. trademark registrations last for 10 years and are renewed every 10 years. However, after the first five years, the trademark owner must file an Affidavit of Use called a Section 8 Affidavit in order to maintain the registration. The fee for this Section 8 Affidavit is currently $100 per class of goods or services, plus the attorney’s fees to prepare and file the Affidavit. Additional fees will apply if the Affidavit is filed late and/or filed with a Section 15 Affidavit of Incontestability.
10. Should entrepreneurs utilize online sites like LegalZoom or Nolo for their trademark services, or is it better to consult with a local professional?
It is always better to consult with a local trademark attorney. While online sites like LegalZoom and Nolo offer trademark services at reduced rates, they are not authorized to provide legal consultation. An entrepreneur could make costly mistakes without the proper consultation and guidance.
Special thanks to trademark expert, Venus Griffith Trunnel for sharing her wisdom with our community of entrepreneurs here on SBSQ.org.
Don’t let your hard work go down the drain. Let the answers above guide you through the trademark process. Get the legal protection you need to build an unstoppable brand.