• Christina Simpson, ESQ.

Why Trademarking is So Important for the Start Up Company

Trademarking: An Important First Step Often Overlooked by the Start-Up Company

Starting a company can be both exciting and stressful.  However, the perks of owning a successful, well-known and established company can for outweigh any stress you would have undergone during the start-up phase. Part of the recipe for a successful company is building a powerful brand name.  A brand name is what identifies a product or service. It is the name that you want to come to the forefront of everyone's mind when they think about the product or service. Creating, protecting, and maintaining this brand can take some work, but it is an essential first step for a start-up business owner.  One of the most common, and if I may say, most beneficial forms of protection is the “trademark”.

First of all, what exactly is a trademark?  The United States Patent and Trademark Office (“USPTO”) defines a trademark as “a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”  In other words, a trademark can be the name of your company, the logo, or even the slogan for your company -- whatever it is that uniquely identifies the product or service that your company is providing. Sometimes we hear the term “service mark” used interchangeably with trademark.  A service mark is basically the same as a trademark, but used when talking about services instead of goods.

But, the bigger question is why is this even important to the individual starting a new company?  Because it has everything to do with branding oneself! It is the foundation to protecting that name and reputation that you are trying so hard to build.   The overarching principle behind holding a trademark registration for your good or service is that no one else holds a registration for that trademark, or a similar trademark for that matter for your good or service. By filing a Trademark Registration with USPTO and gaining acceptance, you get the necessary protection for your brand name,because once you have registered your trademark with USPTO and established use, you are now considered the sole owner of that trademark.  That means that you and you alone can use your company’s name, slogan, or logo. Registering your trademark with the USPTO also gives you the ability to go after those using your trademark without your permission because you now have established proof of your priority in existence.

Thinking about your trademark in the initial steps of planning your business may save you money, time and many other complications later on down the road.   During this planning stage, you will have had time to figure out whether the name/slogan/logo you have chosen is already being used by someone else, thus eliminating the possibility of having to change your name down the line or even being the subject of a lawsuit for trademark infringement.

The first step in the trademark registration process is to determine whether the trademark is actually available.  Therefore, it is important to do a Trademark Clearance Search prior to starting the registration process. A clearance search is basically a search that covers federal registrations, state registrations and common law unregistered trademarks.  Doing this search lets you see what's out there, and whether you will actually be able to register your trademark. If the search comes up clear, then you should not have a problem registering your trademark. If other companies show up in your search using your same name, you may not be able to register your trademark.  This is where an attorney may be helpful in determining whether there would be a likelihood of confusion between that mark and your mark, or whether the marks are so similar that others would not be able to tell them apart, or if the goods or services are even related -- all issues the USPTO takes into consideration when determining whether to accept a trademark application for registration.

Once you have gotten past the first step of determining whether your trademark is available, you will need to file an application with the USPTO.  The application is fairly simple, asking for a few basic thing such as:

  1. Owner of the Mark

  2. Name and Address

  3. Description of the mark

  4. Goods/Services

  5. Basis for Filing

  6. Specimen for Use-Based Application

The fee to file an application with the USPTO is generally either $225 or $275 per class of goods or services.  You can probably do most of this on your own, but may have some difficulty accurately identifying and classifying the goods or services in relation to your project.  I would strongly advised that you consult an attorney during this process to ensure accurateness and your ability to obtain the ultimate protection of your trademark.  Failure to identify a good or service applicable to your product means that you don’t have any protection in that area. This leaves open the possibility for someone else to obtain a trademark registration for that good or service.

Once you actually submit your application, along with the required fee, the waiting period begins.  In a few months, you will know whether the USPTO has accepted your trademark application and granted you a trademark registration or if your application was refused.  If your application is refused, you may be required to answer one or more Office Actions issued by the examining attorney. You should definitely consult with an attorney when answering these actions.

Once you get past the hurdle of registration, you will still need to maintain your registration, by filing maintenance documents showing that you the trademark continues to be in use at the end of the first 6 year period the trademark is registered, and then every 10 years after that going forward.

You must also always remember that your work does not stop after you’ve registered and maintained your trademark.  You must continue to periodically monitor your trademark and others to prevent infringing and diluting uses of your trademark.  This basically just means you have to watch out for people using your trademark without your permission or for purposes that might devalue the use of your trademark and/or brand name. An attorney can be an essential asset here because they have the ability to effectively and quickly identify infringers and start the necessary actions to get them to cease and desist.

It seems like a lot of work for something so simple, but trust me it is one of the most important things you can do for your business.  One’s brand name follows them forever. You might as well as protect that brand name in every way that you can, starting with a trademark.

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