Branding: Registering Your Trademark and Avoiding Common Pitfalls

Branding and Your Business: Why Register Your Trademark?

Your trademark is your brand, and trademark law protects your use of certain logos, symbols, words, phrases, and sometimes even colors and sounds. In order to obtain legal protection for your trademark, you need a qualifying mark (note: this can be a complex legal issue) that is used in interstate commerce. Nothing more. This is called common law protection. However, owning a federally registered mark provides big benefits to any business that is putting any amount of time, money, and energy into their branding efforts.

Obtaining a federally registered mark through the United States Patent and Trademark Office (USPTO) can be a long process, but provides the owner of the trademark the following benefits:

·      Provides public notice that you claim ownership in the mark (thereby deterring others from using the mark, or ease in finding you to license or otherwise pay you to use the mark);

·      Gives you certain legal presumptions including the presumption that you are in-fact the owner of the mark, and you have national rights to use the mark in connection with the goods or services that your registration claims;

·      The ability to file a lawsuit regarding use of the mark in federal court (i.e. keys to the federal courthouse);

·      Ability to use the application to obtain foreign rights in other countries around the world;

·      The ability to record the mark with U.S. Customs and Border Protection to help keep infringing goods from entering the country;

·      The right to use the registered trademark symbol ® (it’s against the law to use this symbol if you don’t have a registered mark); and

·      Inclusion on the USPTO’s online database.

These benefits are tremendous, and conducting trademark due diligence and registering your marks should be the first step in any branding effort by a company.

Avoiding Pitfalls in the Registration Process

Hiring an attorney is not required to file a trademark application – but should be seen as a wise move. The trademark process is riddled with nuances and complexities, where applicants can find themselves in trouble quickly, and mistakes can be costly. An attorney can help you avoid pitfalls by assisting you before, during, and after the trademark registration process, including policing and enforcing any trademark registration that might issue. Simply said, the right attorney can save you from future costly legal problems by conducting necessary searches before filing. The attorney can also file your registration correctly, and help during the application process with several things that can arise and ultimately impact your trademark rights, such as determining the best way to describe your goods or services, and preparing responses for the USPTO’s office actions (e.g. a refusal to register). Last, an experienced attorney can help you with using the mark properly and policing the mark once you have it. This is critical so that you don’t lose rights (which is possible). See also Genericised Trademark Information. The USPTO only registers trademarks, beyond that, it’s up the trademark owner.

At SK&S Law Group, our IP attorneys are experienced in all trademark matters, and can provide the right guidance from picking a strong trademark, to registration, enforcement, and defense. If you have a trademark question, we’d love to chat. Email SK&S Law Group IP attorney Christina Saunders at saunders@skandslegal.com or give her a call at 303-396-0270 to chat about your trademark needs.

Christina Saunders