What comes to mind when you think of a trademark? There are several original assets a business may trademark for their brand. A business name, logo, design, phrase, tagline, and brand mascot may all receive trademark registration as part of the company’s intellectual property (IP).
In this miniseries, we’re going to explore the following topics surrounding trademarks.
- What trademarks are and what they are not, such as comparisons to other types of IP like copyrights.
- Determining the right time to file for trademark registration.
- Basic tips for registering a trademark.
What is a Trademark?
A trademark protects words, phrases, symbols, designs, and logos for a business. These creative marks distinguish a business from its competition and emphasize its uniqueness to the world.
Aside from gaining and building recognition with your customer base, filing for a federal trademark is an important form of IP protection. The registration ensures that the owner has exclusive rights to the mark. As such, the only person that may use this trademark is the owner. If anyone else attempts to plagiarize or use your registered mark without authorization, they are infringing upon your mark. The owner has the rights to take legal action, such as serving the plagiarizer with a lawsuit for trademark infringement, to protect their registered IP.
Does a trademark expire? The short answer is no. If the company is active and in business, its trademark will never expire. This bit of compounding interest adds to the business over time, allowing it to continue building recognition with consumers for years, and decades, into the future.
What Isn’t a Trademark?
Now that we understand what a trademark is, it’s important to distinguish these marks from other forms of intellectual property that are occasionally confused as being the same as or having the same functions as a trademark.
What Are Copyrights?
A copyright protects original works of authorship. Some forms of authorship that may qualify for copyright registration include literary works, performing arts, visual arts, motion pictures, photographs, digital content (like websites and blogs), and architectural works. Business names and logos would not be considered original works of authorship; hence a copyright filing would not be able to protect these forms of IP.
If you are not familiar with what a copyright is, it’s easy to think this form of IP is the same as a trademark.
What is Doing Business As (DBA)?
Trademarks, as mentioned above, protect media that distinguishes a business. A trademark may be filed at the federal level and grant its owner exclusive rights to the name. A DBA is not a corporate name. You may use a DBA to legally conduct business under a name that is different from your existing name
A DBA and trademark are often confused with one another because both terms are names. However, they each have a different meaning. Unlike a trademark, the owner of a DBA may only claim the name on the state level. If you file for a DBA in the state of California, for example, you discourage other Californians doing business in the state to file for the same DBA. However, your chosen DBA may be filed for and use by business owners in other states such as Washington or Nevada — so long as no other companies are using that same DBA in these states, that is.
When Should I File for a Trademark?
Typically, the best time to file for a trademark is to do it as soon as possible. The sooner you file for federal registration, the sooner you may be able to protect your brand’s assets. However, if you decide to wait because you plan to use the trademark later it’s a good idea to prepare to specify your “basis” for filing in your application.
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According to the United States Patent and Trademark Office (USPTO), trademark applications that file under the use-in-commerce basis must already be using the mark in the sale or transport of goods or in commerce between the United States and another country. The mark must appear on the goods, such as on a label or tag or on displays associated with the goods. The mark must also be used in the sale or advertising of services.
You may establish “use-in-commerce” basis by sharing the date when you first used the mark anywhere and the date when the mark was first used in commerce. Your trademark application must also include an example that shows how the mark was used in commerce.
“Bona Fide Intent” Basis
Let’s say that your mark is more than an idea but isn’t quite market ready. The USPTO recommends filing under a “bona fide intent” basis. You may supplement the intent to use the mark by creating sample products and drafting a business plan.
If you haven’t used the mark, neither on goods nor in commerce, but plan to do so in the future, you may file under an “intent-to-use” basis.
How to Register a Trademark
Now that you have a better understanding of what a trademark is and when is the best time to register this mark, you may start the process of registering a trademark.
Start by following these guidelines.
1. Conduct a Trademark Search
The best way to determine if your trademark is available is to conduct a trademark search prior to filing an application. Conducting a search allows you to see if your trademark is available for public registration. You may also view marks that are pending registration or have already been registered.
You may search through the USPTO’s Trademark Electronic Search System (TESS) or work with a third-party service like MyCorporation to conduct a name search. If the mark is available, you may move forward in the filing process. If not, it’s best that you return to the drawing board and begin brainstorming ideas for a different, unique mark for your business.
2. Consult a Trademark Attorney
Prior to filing your trademark application, it is possible you may have additional questions about the filing process.
Rather than attempt to DIY the process on your own, seek out the help of a trademark attorney. They may answer any questions you have about filing a trademark application and assist you so that you do not make any mistakes regarding your specific situation.
3. File a Trademark Application
Once you have conducted a trademark search, consulted an attorney, and feel confident you are ready for a trademark, it’s time to file a trademark application. Reserve the mark by filling out an application and paying a filing fee.
Trademark Registration: Next Steps
What happens after the application has been submitted? You may consider working with a trademark monitoring service. This is a service provided by third-party filing organizations, like MyCorporation, that monitors your trademark application. It also lets you know when the trademark has been approved for registration.
Filing for a trademark may take a bit of extra time, research, and money but it is worth it to protect the valuable IP of your business. Join us next time for our post about copyrights in this IP miniseries for Guidant Financial!
Deborah Sweeney is the CEO of MyCorporation.com. MyCorporation is a leader in online legal filing services for entrepreneurs and businesses, providing start-up bundles that include corporation and LLC formation, registered agent, DBA, and trademark & copyright filing services. MyCorporation does all the work, making the business formation and maintenance quick and painless, so business owners can focus on what they do best. Follow her on Twitter @deborahsweeney and @mycorporation.