5 Trademark Truths Your Probably Didn't Know
If you’re thinking about protecting your brand with a federal trademark, considering these 5 common trademark misconceptions could help save you some time and money.
Filing a Trademark Application Before Starting Your Business Could Backfire
This may sound odd coming from an attorney. Especially one who offers trademark registration services. But while every business should have a plan to protect their brand from Day 1, that doesn’t mean every business should apply for a federal trademark right out of the gate.
If your business is pre-revenue, you have no idea whether your brand is going to resonate with your audience. Your trademark has no actual value other than the emotional connection you have to it. Spending thousands of dollars on protecting it is less of an investment and more of a gamble. Therefore, it’s reasonable to wait until you have objective proof that your brand resonates with your audience before applying for a trademark.
That being said, there are situations where it would be a bad idea to wait.
For example, If you’ve invested enough money in starting your business that you can’t risk losing your brand to someone else (whatever that number may be for you), it makes sense to apply for a trademark immediately. At that point your trademark application is an insurance policy for the initial investment you’ve made in your business.
In certain industries, your brand plays such an important role in your business that you must protect it at all costs. Take fashion for example. Imagine coming out with a line of apparel in the Fall only to have someone jack your style the following Spring. Something like that could kill any momentum that you’ve built, and isn’t worth the risk.
Another example is if you know someone else is using a similar business or brand name. In that case there is a risk of confusion. And if the other business registers their trademark before you, they may be able to block you from using your brand in the future. That’s why it is important to always run a trademark search before launching your business.
However, when it comes to choosing the right time to apply for a trademark, it depends.
Registering an LLC does not Mean Your Business Name is Available as a Trademark
I often hold consultations with new business owners who just want to make sure they haven’t missed anything in setting up their business. And one of the things I’ve found is that people often confuse registering their LLC with securing trademark rights. However, the two processes are completely different, and neither has any significant impact on the other.
When you set up your LLC on the state level, the state will inform you if the business name you want is available. However, that system can’t tell you whether your business name is being used in one of the other 49 states. Additionally, entrepreneurs often operate businesses under brand names that are different from the name of their LLC (i.e., a fictitious name or d/b/a). Therefore, the fact that a name was available for your LLC doesn’t mean that it’s eligible for federal trademark registration. Someone else could still be using a similar name.
The only way to figure out whether your brand name is available for federal trademark registration is to conduct a search of the USPTO database. There are a number of ways to do this. You can search the USPTO database manually, use an automated search tool like Markify, or hire a professional to conduct a search and provide their professional opinion on the likelihood that you’ll be able to successfully register your trademark.
Each method has its own advantages and disadvantages. But whichever option you choose, a trademark search is an absolutely step in making sure you can own your brand.
A Trademark Won’t Prevent Everyone From Using a Similar Brand Name
People often assume that registering a trademark entitles them to the exclusive right to the brand or business name that they’re using. But this simply isn’t true.
Just because you register a federal trademark for your business or brand name, doesn’t necessarily mean that you can prevent everyone else from using the same name. Think about it. There are numerous brands out there with the same or similar names.
- Dove chocolate and Dove soap
- Pinnacle vodka and Pinnacle golf balls
- Domino sugar and Domino’s pizza
At the end of the day, the purpose of a trademark is to prevent consumer confusion. If it’s unlikely that consumers will be confused by the concurrent use of a brand name in different industries, then the USPTO may allow them to coexist.
This is an important point to understand if your goal is to stop someone else from using the same name as you. If they’re not selling the similar types of products or services, a trademark may not help you accomplish that task.
You Don’t Need a Lawyer to Represent you Through the Trademark Process
In case you were wondering, if you run a business that’s headquartered in the US, you don’t need an attorney to represent you through the trademark process. Again, this may sound weird coming from an attorney. Especially one that offers trademark registration services. But the truth is, non-lawyers register trademarks successfully everyday.
So you’re probably wondering, ‘Zane, if I can register my own trademark without having to pay you, why would I hire you?’
Good question.
One reason is for the confidence that comes from working with a professional. While many people are able to successfully file their own trademark, just as many are unsuccessful. They make mistakes that a professional would never make. Like forgetting to run a trademark search before filing their application. Or, failing to produce an acceptable specimen. Or, failing to describe their products or services properly.
As a result, their applications are denied, and they lose their rights along with the money they spent on the filing fee. (See here). At the end of the day, you hire a professional because you want the confidence that comes with knowing the job was done correctly. You want to be able to move forward without hesitation, knowing that your brand is protected.
The second reason to hire a professional is to preserve your most valuable resource – your time. As a solopreneur who launched his business with a $625 investment, I fully understand the struggle of trying to start a business on a shoestring budget. But as I gain experience, I realized that my willingness to spend my time going the DIY route was holding me back.
While I was fully capable of filing my own taxes, managing my own social media accounts, and developing my own website, all of it was a waste of my time. Eventually I hired outside professionals to do all of these things. And by doing so, I got back time to do the things in my business that I can’t hire someone else to do. Things like business development that actually grow revenue.
Bottom line, you hire a professional to register your trademark because you recognize that successful business owners spend their money to save their time. Not the other way around.
Registration Doesn’t Protect Your Trademark Forever
Finally, once they have a registered trademark, many business owners assume that they’re good to go. That their brand is forever protected, and they don’t have to think about it again. The reality is quite different.
Registering your trademark federally is just the first step in protecting your brand for the life of your business. Once your trademark is registered, you must:
- Monitor it to make sure no one else is infringing upon your rights
- Continue to use your trademark
- Keep up with periodic filings with the USPTO, including filing for incontestability after 5 years.
- And update the USPTO if any of your information changes
I explain trademark maintenance more fully in another blog post, so I won’t go into detail here. However, my point is you have to maintain your trademark rights or you will lose them.
At the end of the day…
This is just a shortlist of the mistakes and misconceptions that people make when it comes to securing their brand. The easiest way to avoid making a mistake is to work with a professional. If you have questions about what that might look like, don’t hesitate to schedule a discovery call with us. A ten minute call could save you thousands of dollars and months trying to successfully register your trademark.
Best of all, the call is judgment and commitment free. Our only goal is to help you choose the path that’s right for you. So schedule your discovery call today, and get the clarity you need to move forward with confidence.