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Trademark Protection by Use or by Registration

Trademarks help small businesses and business owners protect their brand. It grants exclusive rights to brand names, product names, and logos. This intellectual property right gives a small business legal protection in their mark. It will follow that particular set of goods and services.

This article walks entrepreneurs through how to get common law rights to a trademark, the federal trademark registration process, and the benefits of each.

Types of Intellectual Property Rights

There are multiple types of intellectual property that are useful for small businesses. The three most common are:

  1. Copyright: Original creative works like books, music, websites, movies, and songs. The United States Copyright Office handles federal copyright application filings. Only tangible mediums are available to mark. Federal registration is not required, but it does allow for more legal protections. You will know a copyrighted material because it has the © symbol next to it.
  2. Patent: Protection for ideas, processes, and machines. The U.S. Patent and Trademark Office (USPTO) handles these office actions and registrations for inventors.
  3. Trademark: Protects a “word, phrase, symbol, or design, or a combination thereof," used to identify and distinguish a company's goods. When protecting a company's services, then the term is “service mark". The USPTO (uspto.gov) governs these marks when federally registered. Marks appear with a symbol following it, depending on the type of mark.

A licensed attorney who focuses on intellectual property can help answer questions and other FAQs you may have. These questions may be about:

Trademark Basic Facts for Business Owners

Your mark (either trademark or service mark) is legally protected through common law once it goes into commercial use. This means once you use it for a business purpose in public, you have rights to it. This happens through advertising online, on social media, or on products.

Sometimes it makes sense to have a federally registered trademark. It establishes a legal presumption of ownership of the mark. This means it is harder for someone to dispute you as the owner of the mark as it pertains to those goods and services. A United States Patent and Trademark Office database lists the registered mark. This puts other parties on notice of your right. You can register with the USPTO on their TEAS website. This makes it easier to obtain trademark protection in other countries.

Trademark Protection by Use

Trademark rights arising from use (rather than from registration) are sometimes referred to as common law rights. You can establish rights in a trademark if you have a legitimate use of the mark. This means you use the mark in real-time in association with a product, brand, or service you provide.

This protection is automatic as long as it is a legitimate use of a mark for business or commercial purposes. For example, Spotify retained common law rights to the name "Spotify" the first time it was used publicly. Nonprofits can claim common law rights to trademarks even though they are not usually thought of as a business.

The first person to use the trademark in business or file an intent to use application has the superior right to use and registration. You can even trademark a business name or product name by using it. Disputes arise if more than one person or business claims common law rights to a mark, so taking additional steps to protect your rights to a mark (such as registration) is more effective than relying on common law rights only.

Trademark protection by use lasts as long as you continue to use the name or mark in commerce. If you stop using the mark, your rights to it will not continue to exist. For example, if Spotify dissolves its business, it would no longer be able to claim the mark "Spotify."

Unregistered trademark owners can use the ™ symbol to declare their trademark or the ℠ symbol for service mark. They cannot use the ® symbol.

Pros:

  • Free
  • Automatic protection

Cons:

  • Disputes often happen, which are costly to defend
  • The first to file an intent to use USPTO application likely will retain the mark
  • Unable to use as a specimen for foreign registration

As you will see below, registration of your mark with the USPTO affords additional protections and assurances.

Trademark Protection by Registration

While trademark protection is automatic beginning from legitimate use of the mark, registering a trademark offers stronger protections for the mark's owner. Startup companies that wish to expand are strongly encouraged to secure federal, and possibly international, protection.

The USPTO handles the trademark application process for federal trademark registration. You can only use the ™ or ℠ symbol while your application is under review. Once your trademark is registered, you may use the ® symbol wherever your mark appears.

Registering your mark requires a filing fee payment with your application. The fee is $250-$350 per classification of goods or services. It may seem expensive, but this protection can save you thousands of dollars. This is particularly true when it comes to trademark infringement. An infringing company may have to rebrand and give up profits for any mark used.

Once you register your trademark, you must continue to use the mark in commerce. You must file a Declaration of Use or Excusable Nonuse of the mark after 5 years to keep it. During the ninth year, you must file an Application To Renew the mark. After that, you need only to file a Renewal every ten years to keep your trademark protection so long as you continue to use the mark in commerce. You also have a duty to police infringements in order to keep it active.

Pros:

  • Your claim to the mark is visible to the public with a ® symbol
  • Ownership presumption of the mark
  • Exclusive right to nationally use a trademark
  • Ability to sue others about the mark in federal court (injunction, damages)
  • Foreign country registration is possible by using proof of your U.S. registration
  • Filing with the U.S. Customs Service to prevent the importation of infringing foreign goods

Cons:

  • Application fee
  • Attorney costs to handle the USPTO application or analyze the viability of your mark
  • The continuous need to police infringement

Need Help With Trademark Protection? Call a Trademark Attorney Today

Most small business owners have some sort of intellectual property worth protecting. It could be a trademarked name, logo, symbol, or valuable trade secret. It's not always necessary to register a trademark, but an attorney can give you legal advice and help the process along. Before you become a trademark owner, understand the risks and benefits associated with your mark. Call a trademark law attorney today for a consultation.

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