Every business starts with two things: an idea and a name. While entrepreneurs (rightfully) focus on executing on their ideas when launching or expanding a business, safeguarding the business name and brand becomes crucial. A key step for safeguarding is trademark registration. Registered trademarks are often essential for brand protection and may significantly enhance the value of the business. But what exactly are trademarks, and why does a business need one?
What Is a Trademark?
A trademark is any word, name, logo, design or any combination that identifies goods or services of one source and distinguishes them from others. It may be the name of a business, or it may be a name the business uses in connection with certain goods or services it offers.
Registering a trademark with the United States Patent and Trademark Office will help prevent others from trying to use the same, or confusingly similar, name or logo. More importantly, registering a trademark allows the business to use a name with less worry of infringing on someone else’s rights.
Choosing the Right Trademark
Someone launching a new business or introducing a new product or service should choose a name that stands out. Choosing a name that’s too common or generic exposes the business to potential legal problems.
First, an application may be refused if the trademark is merely descriptive of a business’s goods or the services it sells or if it is confusingly similar to an existing mark or pending application. A mark is merely “descriptive” if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark is “confusingly similar” to an existing or pending mark if the marks are similar and the goods or services are related such that consumers would mistakenly believe they come from the same source.
Additionally, without a registered trademark, other businesses could use a similar name or logo, causing confusion among a business’s customers and potentially damaging its reputation. A brand is the business identity — it’s how customers recognize and relate to that business. A registered trademark can serve as legal protection and enable a business to prevent competitors from using similar names that might confuse its customers or dilute its brand’s reputation.
Even worse, if a competitor has registered the same or a similar trademark, the owner can seek to prevent a business from using its trademark. The owner may send a cease-and-desist letter or take legal action against the business owner, such as filing a lawsuit. This may result in the business being legally obligated to change its brand name or logo, resulting in significant costs and potential loss of customer recognition and loyalty.
To help reduce the risk of wasting time and money dealing with legal disputes from potential and future competitors in the business, a business should choose a distinctive trademark that is clever and conceptually strong. The trademark should relate well to the company, but it shouldn’t resemble anything else in the business’s market.
Registering a Trademark
Those thinking of registering a trademark should consult with an attorney early in the process to determine whether their trademark is registerable. A trademark attorney can identify potential problems down the road and provide solutions to prevent those problems. Most importantly, an attorney can be a guide through the process of filing an application and registering the trademark, as further outlined below.
Step 1 – Trademark Search: Before filing an application, it’s important to perform a thorough search of existing trademarks to ensure the trademark is available. The trademark registration process can be complex, requiring an understanding of nuanced trademark laws and the potential implications for a business. An attorney can guide the applicant through the initial process by conducting a thorough trademark search.
Step 2 – Application: If a trademark appears to be registrable, an attorney can help the applicant prepare and file the application correctly. Part of the trademark application process is determining which International Classes for which to register the trademark. With 45 International Classes, it can be easy to become confused. A trademark attorney can much more easily make the determination about which International Classes to register. Filing the correct class(es) the first time allows for a quicker, less costly registration process.
Step 3 – Examination: Once the application has been submitted, an examining attorney at the USPTO may flag certain legal problems with the trademark, as well as with the application itself. An attorney can help applicants respond to any objections or legal issues that arise in this process.
Step 4 – Registration & Renewal: Following registration, an attorney can help the trademark owner submit timely renewal documents as required. An attorney can not only monitor new USPTO filings, but also the unauthorized use of the trademark. Working with an attorney allows the businessperson to focus on growing the business, not policing the trademark.
A trademark attorney can guide applicants through every step of the trademarking process, helping them avoid potential pitfalls and maximize the benefits for their business.
Tyler Thorne is a corporate transactional and trademark attorney at Gallagher & Kennedy in Phoenix, where he helps young entrepreneurs, startups, and athletes-turned-business owners and investors through the legal process of starting and operating a business. He developed a niche practice representing athletes in their post-career ventures from his own experience as a professional baseball player-turned-lawyer.
Gallagher & Kennedy offers comprehensive trademark services tailored to meet each client’s unique business needs, helping them secure their business’s identity, increase its value and ensure its future growth.
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