Protecting your brand- trademark basics

What Small Business Owners Should Know About Trademarks

Whether your business is still just an idea, or you are going full steam ahead with active customers, it is never too early to think about legal protection for your business name, logo, tagline, or other distinctive words or images your customers associate with your product or service.  One relative easy thing you can do as soon as you have begun using those words or images publicly is apply for trademark protection.

What a trademark is: Once you begin using a name or a logo (a "mark") in business, you have some protection for that mark even if you do not register for trademark protection, if you are the first to use the mark and if it does not violate another company's registered or established mark.  The danger is that those are two very big "ifs," and you might find yourself building a following around your brand name only to be met with a cease and desist letter from some company you have never heard of who had previously registered that trademark- something that has happened to at least one business we know of in recent years.

Why register a trademark: Registering a trademark will do 3 things for you:

1. The trademark application clearly marks the priority date if someone later applies for the same or similar mark.
2. The initial step of searching the US Patent and Trademark Office ("USPTO") database will tell you early on if you might have a conflict with someone else's registered mark.
3. Once approved, you have nationwide enforcement rights if someone else uses a name or a mark that is likely to confuse your customer base.

How do you know if you can get a trademark:  In order to get trademark protection, your mark must be distinctive, not generic.  For example, you cannot trademark the word "food," but trademarks have been granted for names like "myfoods,"  "bliss foods," and "food made fabulous." If you have a distinctive logo, that can also be protected, with or without words.  You can do a quick search on the USPTO trademark database to see if your business name or tagline is trademarked by somebody else- even if it is, it is worth further inquiry.  If a name is registered for a different category of goods or services than what you provide, it may still be possible to register your mark, though this can be a little more complex and will require you to demonstrate to the USPTO that your use of the mark in your area would not cause customers to be confused about the two brands.

How to apply for a trademark:  You can apply on your own using instructions from the USPTO. The filing fee is $250 for each classification you are seeking protection in.  For example, if you were to register "xyz foods" as only "staple food products," you would pay one filing fee, but if you wanted to register it also under "meat and processed food products," you would pay a second filing fee.  If you choose to only do one, all that means is that you only have protection in that classification, and someone else might be able to come along and register "xyz foods" under the second classification.

Does a trademark protect written or creative work?  Generally, creative work is covered by a separate body of law known as copyright law.  Similar to trademarks, a common law copyright ownership attaches as soon as you create and publish your work (a story, picture, movie, song, etc.), but your ability to protect and enforce those rights (and to establish your authorship and timing of publication) is much easier if you register the copyright, which is a separate process from registering a trademark.  where this can get confusing is with logos- are they creative works subject to copyright or a mark subject to trademark?  The simplest answer is that the difference is whether the image is used in commerce to identify your company or your brand (as opposed, for example, to an image created to augment content on the website, not necessarily to identify your company- think infographics or other images used to illustrate a point).

A note about copyright: Just because protection for creative works is distinct from trademark protection for your brand doesn't mean you shouldn't worry about it.  Images that you get from the internet, unless you have gotten them from a service that has already paid royalties or owns the images itself, could be subject to someone else's copyright, which means at some point the owner of that image could demand that you take it down and/or seek royalties for your use of the image.  Additionally, many if not most small business owners who hire a graphic designer to create images for them do not think through or clarify with the designer what rights they have to the images after the engagement is complete.  From the business owner's perspective, an agreement that specifies that the whole project is "work for hire," meaning the intellectual property belongs to the company hiring out the work, is ideal.  But remember that a designer might have a legitimate desire to limit the rights in the work, for their own use as well as to keep the business owner from taking their work to a competitor to augment or incorporate in other designs. 

To hire a lawyer or not?   You can register a trademark on your own, especially if you find no evidence the name is taken by someone else, in which case your only cost is your time and the filing fees to the USPTO. There are also online services that offer filing packages and a basic search for existing marks.  What is missing from both of those is a specific legal analysis of the likelihood that your mark will be accepted if there are other, previously trademarked names or logos that are similar to yours.  This could leave you out the $250 filing fee (or more if you are seeking multiple classifications) if the USPTO rejects your application as too similar to another registered mark.  In contrast, knowing ahead of time that the mark will be challenging to register could lead you to revise your words or images to facilitate the trademark process, which is always easier to do early in your business life before a wide base of your customers have gotten to know your visual brand.

Additionally, because you can get into dangerous waters without even knowing to be concerned about it (see discussion about copyright above), you would be advised to have at least an initial consultation with a lawyer early in the process so that you can be on the lookout for issues that could cause problems down the road, and take proactive steps to protect yourself.