To safeguard these brand assets, you’ll need to secure trademarks. A trademark can protect words, slogans, symbols, and other distinguishing features of your brand by allowing you to prohibit other businesses from using the same—or highly similar—branding as yours.
Yet not all trademarks offer equal protection. For example, you can gain what’s known as “common-law” trademark rights for free simply by being the first business to use your particular brand name in commerce. However, as you’ll see below, common law trademark rights are extremely limited and will prove highly inadequate for most companies.
For maximum protection, you should register your trademark with the U.S. Patent and Trademark Office (USPTO). Although registering with the USPTO typically costs around $300 per mark, doing so provides you with numerous advantages compared with common law marks. Some of the leading advantages of registering your trademark include:
1. Notice of ownership: Registration of your trademark provides your company with official documentation and public notice that you are the valid owner of the mark and have the exclusive right to use it across the entire U.S. This is in contrast to a common law trademark, which requires a company to actually use the mark in business to gain ownership, and that ownership is limited to the local area where the business is located.
2. Prevents others from using a similar trademark: Once your trademark is registered, it’s listed in the USPTO’s database, and no one else can register a confusingly similar mark in connection with similar goods and services. To this end, the federal government is essentially assisting you enforce your rights and preventing infringement before it can start, without any additional action needed on your part.
3. Protects you from infringement: Because the USPTO will not allow you to register a similar trademark to any others that are registered, this also prevents you from accidentally infringing on another company’s mark. This can not only save you from a financially ruinous lawsuit down the road, but also prevent you from having to completely reinvent your brand from scratch if your mark is too similar to one that’s already registered.
4. Gives you the right to sue in federal court: Having a registered trademark gives you the right to sue for infringement in federal court, where you will receive the presumption of being the valid owner of the mark. The presumption of ownership shifts the burden of proof to the defendant who might try to claim they have common law trademark rights as a defense. Under this burden, the defendant must prove that he/she was first to use the mark and their use has been continuous, which can be extremely difficult, requiring extensive documentation and/or witnesses.
5. Offers additional legal remedies: Registering your trademark can increase the number of remedies available to you if you sue for infringement. Depending on the circumstances, you can go after the defendant’s profits, seek statutory and punitive damages, as well as collect for attorney’s fees and court costs. Such remedies typically aren’t available with only common law rights.
6. Allows you to publicly display your registration: Registration grants you the right to use the ® symbol with your trademark branding. Unregistered marks are only allowed to use the ™ symbol. This designation gives your company more credibility and prestige, while letting competitors know you’re serious about protecting for IP.
7. Enables you to apply for trademark registration in foreign markets: While federal trademark registration is usually not enforceable outside of US borders, registering does provide you with a basis for applying for trademarks in many other countries. Having trademarks in other countries can be especially important, with the rapid globalization of the marketplace and widespread use of the internet.
8. Empowers enforcement of trademark by U.S. Customs officials: Federal registration allows you to record your trademark with U.S. Customs and Border Protection. This empowers Customs officials to block the importation of infringing or counterfeit goods and allows you to bring a counterfeiting case to federal court.
Enforcing your rights
It’s important to keep in mind that outside of prohibiting others from registering a confusingly similar trademark, the USPTO will not enforce your trademark rights or bring any legal action against an infringer—that’s up to you. That said, if you discover potential infringement, we can help you enforce your ownership rights, and do everything we can to maintain your trademark rights without a lawsuit. Indeed, we often write letters that not only resolve the conflict, but also inspire the other party to join you in an ongoing joint venture that can benefit both parties.
While federally registering a trademark is a fairly simple process—and one you could do on your own—it’s typically a good idea to just let us handle it for you, so you can stay focused on the business of your business, while we handle the underlying structures that support you to grow your business. As your Family Business Lawyer®, we can not only help you secure the proper trademarks, but we can also work with you to develop a comprehensive strategy to protect all of your other intellectual property, as well as support the ongoing strategy of building a great business and a great brand.
This article is a service of Erin Williams, Family Business Lawyer®. We offer a complete spectrum of legal services for businesses and can help you make the wisest choices on how to deal with your business throughout life and in the event of your death. We also offer a LIFT Start-Up Session™ or a LIFT Audit for an ongoing business, which includes a review of all the legal, financial, and tax systems you need for your business. Call us today to schedule. 720-312-1874