Every now and then a trademark application case hits the headlines that makes you cringe at its arrogance (Apple’s fight to stop any sort of apple symbol being used in a logo) or just makes you laugh (Taylor Swift attempting to trademark the phrase this sick beat). And then there’s the outright scary Facebook wanting to stop any business name from using the word face.
These are extreme examples, but because brand recognition plays such a vital role in today’s business world, companies have become very aggressive when it comes to protecting their names and identities.
So, what are trademarks? When and why do you need them? What role do trademarks play in your business? Finally, how does the trademark application process work? Here’s a closer look.
Trademarks vs. Copyrights vs. Patents
First, let’s make a clear distinction between the three types of protection available from the Federal government.
- Copyrights – A copyright protects original works of authorship both published and unpublished. These include literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software and architecture. Copyright does not protect facts, ideas, systems or methods of operation, although it may protect the way these things are expressed.
- Patents – Patents protect inventions or discoveries. These include utility patents for inventions of processes, machines, etc.; design patents for new design of manufacture; and plant patents for new varieties of plants.
- Trademarks – A trademark is a word, phrase, name or symbol that identifies the source of a product or service and distinguishes it from competitors. You can trademark your company name, product names, logos and taglines.
Interestingly, trademarks don’t have to be registered with the USPTO (U.S. Patent and Trademark Office). If your company creates a logo or name that you want to use exclusively, you can attach the TM symbol, which gives you common law rights, also called an unregistered trademark.
You can do a common law trademark while you wait for your trademark application to be approved. However, you shouldn’t rely on a common law trademark as your sole protection. Common law trademark rights depend on who uses the trademark first. Plus, you can only enforce a common law trademark in the geographic area where the trademark is used. If you want to expand your business products or services to another geographic location and another business has already claimed common law rights in that market, you’re in trouble. Realistically, common law trademark rights are hard to enforce because there is no public record of your trademark.
The Trademark Application Process
Although you can find all the information you need online and apply directly at the USPTO website, saying the trademark process is an easy one would be a major misrepresentation. Going through the process with my own company taught me that, as with most aspects of business ownership, you don’t know what it’s really like until you’ve gone through the process yourself.
First, you need to understand exactly what you’re trademarking. Is it just your business name or more than that? In my case, I needed trademarks on my business’s name, a newsletter and a microsite, as well as all logos and domain names associated with the brand. Most small businesses begin using a brand name and logo without trademarking them which is a good thing since once you start the trademark application process, you’ll need to provide examples of where and how you are using the name. For example, you can show that you’re using it on your company letterhead, business cards or your website URL.
Even if you’ve searched for your brand name online and didn’t find anything similar, it’s still possible another business owner has started the trademark application process for the same trademark. You can search online on the USPTO TESS (Trademark Electronic Search System) database or have an expert like those at CorXec do it for you. (Using TESS requires understanding what the database includes, how to construct a complete search and how to interpret the search results, which is why many entrepreneurs prefer to have a service handle it for them.)
Next, your application must include a clear drawing or depiction of the trademark you want to register. Federal trademark law requires a drawing either be words only (called a standard character drawing) or a special form drawing (which shows a mark with stylization, designs, graphics, logos or color). Obviously, the more specific and original you can make this drawing, the better chance you have of securing the trademark. For example, in my company, we used a specific color scheme, font, and layout for the logo.
Determining your business’s classification is vital to the trademark application process. The USPTO recently updated their system for classifying goods and services by providing the Trademark Next Generation ID Manual on their website. You can search for a few words describing what your business does, how it does it and where it does it from. The system then tries to match your description with several options for classification.
In our case, we found there was no perfect match, but something that came close. We used that classification, but our application was rejected because the USPTO did not agree with our classification. Luckily, the experts we used knew how to fix the issue. They helped us reapply with a better classification, and we got the trademarks we wanted. You most likely will also have to go back and forth a few times before your trademark application is approved, but the point is to get the best protection available, so it’s worth it.
Next Steps for Applying for a Trademark
Once your trademark has been approved, you need to start using it right away and keep it in the public eye as much as you can. Include it in your marketing materials, social media posts, signage, business collateral, etc. Why does this matter? The U.S. trademark system is based on use, so if another company files for the same trademark and can prove you have not used your trademark consistently and in a high-quality manner, you could lose your rights to the name.
To make sure you are using and protecting your trademark, the USPTO requires trademark owners to file a Declaration of Use between the fifth and sixth year following registration (don’t worry; you’ll get a reminder to do this). Then, the owner must file a combined Declaration of Use (or Excusable Nonuse) and Application for Renewal between the ninth and tenth year after registration, and every 10 years thereafter, to continue ownership of the trademark.
