Owners of businesses of all sizes frequently are confused about the benefits of registering their trademark(s) and the difference between a trademark registration and the myriad of other registrations necessary to own and operate a business. This article provides a brief primer on what a trademark is, some best practices, and advice regarding when it is time to call an attorney.
What a Trademark Registration Is and What It Is Not
A trademark registration is a formal filing with either the state or federal government seeking to register words or an image as associated with a particular source of goods or services. Business names often operate as trademarks, but the two concepts are not synonymous. The purpose of a business name is to create a legal entity; the purpose of a trademark is focused on helping consumers.
Trademarks give consumers confidence that each product or service bearing a trademark will be the same as what they have come to expect. Brand recognition associated with trademarks is often one of a company’s biggest assets.
Many business owners incorrectly believe that they have registered their business name for trademark use through common business filings. Formation documents, tax ID numbers, SEC registrations, and similar administrative tasks are distinct from trademark protection.
That confusion is understandable because administrative agencies often check whether a proposed entity name is distinguishable from other names, but that is not the same as a trademark search or trademark registration. The fact that trademark registration is not required to have some common law rights adds to the confusion.
The combination of these factors results in many business owners failing to register their trademarks and being unprepared when they need to enforce or defend their marks.
Trademark Practice Best Practices
Before adopting any branding or rebranding—whether a company name, product name, or service name—companies should invest time and money in a trademark search to identify obvious issues.
No one wants to spend thousands of dollars changing a business, product, or service name after rollout or defending a trademark suit brought by a senior user of a similar mark.
Companies should also consider registering trademarks before use. United States trademark law allows applications for marks not yet used in commerce when a company has a bona fide intent to use the mark. Filing before rollout can give a company a clearer picture of obstacles associated with the chosen mark.
Even if a company does not file federally, a state registration may be worth considering where available. State registrations can be inexpensive and quick, but a federal registration is often far more valuable in today’s internet and e-commerce economy.
A federal registration provides benefits including a presumption of nationwide ownership, federal jurisdiction, stronger enforcement options, potential statutory damages in counterfeiting cases, and advantages for online/domain-name enforcement.
Time to Call an Attorney
Filing a federal trademark application without an attorney is possible, but it often does not make sense. A properly handled trademark application can prevent expensive problems later.
If you receive an office action, do not simply abandon the application. Rejections are common and frequently can be overcome. If you are sued for infringement or see someone using your marks or a confusingly similar mark, it is time to consult an intellectual property litigator.
Your options for defending or enforcing rights often depend on registration status, the length and scope of use, and similarity of the marks. An intellectual property litigation attorney can weigh those factors and provide guidance on how to proceed.