If you aren’t careful about your trademark, it can cost you, both literally in the wallet, and mentally in stress and time. There are several things you need to know about when it comes to protecting your company’s valuable name and/or logo. If you’re thinking about going through the trademark registration process in the near future, take some time to consider the following.
1. It’s important to decide on a strong mark.
The first and most important step to protecting your trademark is choosing a strong mark to begin with. This means avoiding generic terms, which cannot be protected. For instance, the name of a restaurant called “Hamburgers” would be nearly impossible to protect. You also want to avoid descriptive marks. An example of this would be using an image of a television as a logo for a television repair shop. The image may be far too common to be easily protectable.
According to the United States Patent and Trademark Office (USPTO), the strongest terms will be either arbitrary, fanciful, or suggestive:
- Arbitrary: These are real words that have a known and common meaning, but are used for something completely unrelated. Examples of this would be Apple or Blackberry.
- Fanciful: These are words or marks that are basically just made up. They aren’t commonly used words and they have no meaning other than what you assign to them. These can also be instances where a name is used in a trademark, common for law firms, dental practices, etc. Many consumer brands follow the fanciful rule of trademarking: Pepsi, Doritos, Weber Grills.
- Suggestive: These trademarks don’t necessarily describe your company or product, but suggest or hint at what it may be. Examples would be Coppertone Sunscreen or Glance-A-Day Calendars. The key here is suggestive vs. descriptive. You want to imply your product or service, not outright tell what it is.
Our Comprehensive Trademark Search service will ensure that your name, logo, or slogan is free and clear for you to use.
2. Officially registering your trademark has clear advantages.
You aren’t legally required to register your trademark, believe it or not. You can establish certain rights just by your mark’s use in commerce. However, registering it provides certain benefits that aren’t otherwise available:
- You have established legal precedence for using your mark for commercial purposes. This alone can save headaches (and plenty of cash) when it’s time to sort out disputes.
- You have an established timeline of use. By registering, you can easily prove when you started using your trademark, and thereby show without a doubt that your mark came first.
- You retain the right to use the federal registration symbol: ® (an “R” encased in a small circle). If not registered federally, you may only legally use “TM” (trademark) or “SM” (service mark).
- You have the ability to register with U.S. Customs to ensure you are protected from imports that may infringe upon your mark.
- You have the ability to bring forth disputes in federal courts.
- You have a bridge to registering in other countries.
3. You should be planning ahead.
Think about your big goals for your product or company. Will you always just be a local retail shop? Or do you have global ambitions? Will your trademark branch into other industries, or will you strictly stay where you are? This determines whether you’ll register for multiple trademarks, how much monitoring you’ll need to do (local vs. national vs. global), and also how seriously you’ll take any disputes that come up (you may ignore a dispute that comes up across the country if you have no plans of expansion). Take the time to think where you want your business to go, and act accordingly.
4. You need to actually use your trademark after it has been registered.
This may seem obvious, but it bears mentioning. Once you’ve established your mark, be sure to identify it as such by using the “TM” or official “®” symbol. In addition to putting the symbol on written content, be sure to include it on products, product packaging, websites, etc.
You need to also renew your registration with the USPTO every ten years, and also file a Declaration of Use between the fifth and sixth year after the registration date.
5. Some trademarks end up becoming household names.
While companies like Xerox and Kleenex certainly benefit over their brand names becoming nouns for their products, they’ve also lost some ownership of those trademarks. You want to protect your brand from becoming an entire product category – when that happens, you lose brand awareness because customers will assume that all brands are really your product.
You can best protect this by always using your trademark as an adjective and not as a noun. For instance: “Buy Kleenex Brand Facial Tissues,” instead of just “Buy Kleenex.”
Read more about this in our guide on Trademark Registration of Common Words or Phrases.
6. You need to constantly monitor your mark.
Early detection of potential trademark infringement is critical. Our monitoring service will provide regular searches for potential infringers and conflicting uses of your trademark, which will ensure that your trademark is being protected.
7. You need to take steps to protect your mark when disputes come up.
For any company or product, trademark disputes are bound to come up. When you notice even the most minor dispute, it will be up to you and your lawyer if you’ll take any kind of action. If you own a restaurant called “Billy Bob’s Burgers” and see a BBQ sauce on the grocery store shelves called “Billy Bob’s Barbeque,” you must consider if you’ll ever have retail products or if you’ll let this possible confusion slide. You also have to consider the strength of your trademark: how long have you had it, is it a generic term that won’t hold up well, etc. Our expert trademark lawyer is available to consult on these items.