Understanding how to protect your brand and avoid infringing trademarks owned by other businesses can be complicated at times. But, for every startup and small businesses out there, understanding trademark law is critical to building a successful brand.
In this post we will cover a lot of ground and focus on the six topics below.
- Trademark Law
- Don’t Pick a Generic or Descriptive Mark
- Researching Trademarks
- Trademark Applications
- Post-Application Filings
- Post-Registration Filings
1. Trademark Law
A trademark is a name, slogan, or other mark that serves as a source identifier. That means consumers can purchase a good or service and rely on the trademark attached to it as an identification of who is selling that good or service.
To get trademark rights, you first need to use your mark in commerce. Once you use your mark in commerce, you gain a “common law” trademark that you can enforce in court. Of course, it is always a good idea to register your trademark with the United States Patent & Trademark Office for better protection. For example, a federal registration can help you protect your mark throughout the entire country rather than just in the geographical areas in which you are using your mark.
- What Everyone Ought to Know About Trademark Law
- How to Get Trademark Protection Before Use in Commerce
- 5 Keys to Protect Your Trademark
2. Don’t Pick a Generic or Descriptive Mark
When picking your name, be sure to pick something that is not generic or descriptive. That’s because generic and descriptive marks cannot be protected. As an example, if you want to open a barbecue restaurant, don’t call it BBQ Shack because you will not be allowed to own those words in connection to the sale of barbecue. If you could, other companies would be prohibited from using those words to describe their business.
3. Researching Trademarks
Before you use a mark in commerce (and certainly before you file a trademark application) you should do some research to see if anyone else is using the mark in association with similar goods or services. That’s because, generally speaking, the first person to use a mark will be deemed the owner of that mark.
You should look for anyone using an identical mark or any mark that is confusingly similar to your mark because trademark protection extends to any mark that might confuse consumers. Further, your search should mostly focus on other marks being used on similar goods and services to your goods and services. That’s because trademark rights are specific to a type of good or service (think Delta Airlines v. Delta Faucets).
Once you have confirmed that no one else is using the mark you want to use, you can move on to an application.
4. Trademark Applications
When you are ready to file your application with the USPTO, you can do so online. While anyone can file for an application, using an attorney is highly recommend (read more on that here). The application process includes completing the form, identifying the goods or services you will sell under your mark, submitting a specimen showing your use of the mark in commerce, paying the application fee, and submitting your application.
We’ve covered all of those topics a lot on this blog. Read more about them at the links below.
- Why Your Startup Should Apply for a Federal Trademark
- Understanding the USPTO Trademark Filing Options
- How Much Does a Trademark Application Cost
- How to Find a Good Trademark Specimen
- Trademark Application Timeframes
- How to Find & Hire a Trademark Attorney
5. Appealing a Denial
After you file your trademark, you may receive various correspondence from the USPTO (and you’ll probably get some spam too). Some of those communications will be simple requests to disclaim a portion of your mark (meaning you won’t claim protection for that word) or to correct your identification of your goods or services.
Unfortunately, your application may be denied. If that happens, you should read out post What You Should Do If Your Trademark Application Is Denied. Sometimes you can overcome the denial, sometimes you can’t.
If you don’t appeal the denial, or if your denial is not overturned on appeal, your application will be deemed “abandoned.”
6. Post-Registration Filings
If your application is approved, you will receive a federal trademark registration certificate. But don’t forget to keep up with post-registration filings. The most important filings occur five years after your registration date, ten years after your registration, and every ten years thereafter. We’ve covered this on our blog before and you can read more at the links below.
That’s A Lot! But Mighty Marks® Can Help
Our online trademarking service helps startups and small businesses obtain federal trademark registrations.
Learn more at www.mightymarks.com.
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.