I get a lot of people, businesses, and bands call me to ask if they need to file a trademark. Some them are starting a new business, others have a product, brand or service that has taken off and they want to protect what they’ve created. Sometimes I recommend that clients file a trademark, sometimes I tell them to wait. My response is based on the stage of business that they’re in, the goods and service that they offer, and their long-term goals.
What is a Trademark?
A trademark is any word, slogan, symbol, design, or a combination of these things that identifies the source of goods or services and distinguishes them from that of another company. Think Coca-Cola versus Pepsi. If you’re a Coke person, you don’t usually buy a Pepsi cola when you want a Coke, right? The Coca-Cola trademark identifies the source of goods. You see the branding and you know the cola you’re buying is a Coke and not Pepsi cola or that weird La Croix cola (which I love). You can even trademark a sound, color or smell if it has a brand function and identifies the source of the goods.
Do you need to file for a Trademark?
It depends! (What a lawyer answer, right?). Most people do not know that in the United States, trademark rights are created via use of a mark in commerce. This means that as soon as a person uses a mark and attaches it to the sale of a good or service, they have legal rights to the mark. These legal rights are called common law trademark rights. Provided, of course, that no other person or entity has used the mark for that type of good or service already. The rights are often limited to a particular geographic area. This means that you may have difficulty in enforcing the rights beyond that geographic area, and it may be difficult for others to know that you have common law rights to the mark.
Why file for trademark protection?
Some people and businesses still choose to file for trademark protection. Federal registration can enhance your rights. Some benefits of federal registration:
- Registration creates a legal presumption that you own the trademark, which is helpful if you ever need to sue someone to enforce your trademark.
- Your trademark becomes part of the USPTO database, which creates a public record of your ownership and identifies the date you began using your trademark. This deters people from using your mark. People normally Google a mark, and some do a basic trademark search via a government website. As such, they would see that you’ve registered the mark and likely will use a different mark.
- You can use the trademark symbol (R with a circle) if you register the mark.
- You can record your trademark with U.S. Customs and Border Protection to prevent importation of infringing or counterfeit goods.
- You have the right to bring legal action concerning the trademark to enforce your rights in federal court.
- You can use your U.S. registration as a basis when registering for a trademark in some foreign countries.
If you decide that you would like to register your mark, feel free to give me a call! I can file for a trademark in the U.S., Canada or Europe.