A big question I get asked frequently by online business owners is: “When should I get a trademark.” And my lawyerly answer is: “It depends.”
Before I chat about what the answer depends on, let’s cover what a trademark is and why you may want one to begin with it.
And FYI, everything I share is legal education and information, not business, financial, or legal advice and it does not create an attorney-client relationship between us. This blog discusses United States trademark law. You should chat with an attorney in your area to make sure you’re taking the right steps for you and your business.
What is a Trademark?
A “trademark” is any word, name, symbol, device, or any combination thereof used in commerce to indicate the source of a product.*
In contrast, a “service mark” is used to identify and distinguish a service. Trademarks and service marks are treated similarly under the law and for the purpose of this blog post I will lump both together as trademarks.
In plain English, a trademark is essentially brand protection – because who wants their competitors to confuse their customers?!
Trademarks are characterized on a spectrum as either:
- Coined – a mark that was invented and has no relationship to the underlying goods or services (think Google for your web browser)
- Arbitrary or fanciful – a mark that does not describe the product or service (like Apple for your electronics)
- Suggestive – a mark that characterizes the product or service in some way (such as KitchenAid)
- Descriptive – a mark that describes or conveys information about the quality, an ingredient, or a feature of the product or service that has acquired a secondary meaning that makes it distinctive (“Raisin Bran” for example)
- Generic terms – a common word, usually a noun, that is considered general and nonspecific (AOL was unable to trademark “You’ve got mail” because it was a common phrase).
The closer your mark is to coined or fanciful on the spectrum, the higher the likelihood that your trademark registration will be approved. And that’s because a mark that “merely describes” goods and services associated with a mark is not registrable (i.e., Soft Socks to sell soft socks).**
Trademark rights are based on “priority of use” in the United States, meaning the party first using the mark may have the ability to prevent others from using it. And the extent of protection hinges on whether you have a common law or registered mark.
Common Law vs. Registered Trademarks
Most states provide common law or statutory trademark protection. That means a trademark can be valid, even without registering it. BUT registering your trademark does provide advantages that make it easier for you to protect your mark (which I’ll discuss further below).
A trademark can be registered in your state or federally. However, registration of a trademark under state law only grants rights within your state. You should consider whether your use of the trademark is limited to your state (and hint, if you have an online business, your reach probably expands beyond state borders).
Before registering a trademark for your online business, you should retain an attorney who specializes in trademarks to perform a due diligence search to confirm that the mark is not likely to infringe on a third party’s trademark.
Conducting a trademark search is key. You want to make sure that there is no likelihood of confusion between your mark and someone else’s.
I always encourage online business owners to do their own preliminary search.
Because states provide common law rights, it’s important to search online platforms and social media sites to see if your mark is already being used.
Research with your Secretary of State for corporate and trade names.
Poke around on Google.
Search on domain hosting sites.
Visit the Thomas Register and search for a product or service, a company or brand name, and your results will show a list of companies using the name you entered.
You can also head straight for the U.S. Patent and Trademark Office (USPTO) database, or the Trademark Electronic Search System (TESS). TESS is free and includes all registered, pending, expired, and abandoned trademarks.
BUT I also encourage online business owners to have an attorney who specializes in trademarks conduct an in depth search BEFORE you apply for a trademark. Because the attorney will be trained in researching the various permutations of your mark that may cause your application to get rejected.
If you conduct the search yourself but your application gets rejected because of a likelihood of confusion, the trademark attorney will probably not refund your money. And they may (politely) say: “I told you so.”
Why Federally Register a Trademark?
Because of the reach of business operations on the World Wide Web, state-only trademark registration is normally insufficient for online businesses. However, state registration combined with federal registration is good insurance that the trademark will be disclosed in any trademark search.
By federally registering your trademark you gain the ability to prevent others from infringing on your mark for a period of 10 years (with the option to renew).
A few of the other benefits of federal trademark registration include the ability to:
- Enforce your exclusive rights across the United States;
- Use the ® symbol to alert potential infringers of your registration;
- Sue for infringement in federal court;
- Recover attorney’s fees and damages if your infringement lawsuit is successful;
- File your registration with the U.S. Customs Service to prevent importation of infringing foreign goods;
- Experience an easier process registering your trademark in foreign countries;
- Gain a valuable asset for your company.
So now the ultimate question.
“When should I get a trademark?”
There are 3 things to consider before you spend the time (and money) applying for a trademark.
1. Do you have a profitable product or service?
You’ve thought up a catchy name or are enamored with your logo. Are you making money?
Real talk – if you have no proof of concept (i.e. no funds flowing into your business bank account from happy clients or customers), consider if it’s really time to move forward with a trademark application.
2. You intend to stick with your product or service.
The average trademark application takes about one year from start to finish. Yup, 12 months. 365 days. 8760 hours.
And that’s why it’s important to consider if you plan on sticking with the mark you’d like to register for your product or service.
If there may be changes or tweaks in the near future, consider that in your decision-making.
3. You plan to stop others from infringing on your trademark.
Now here’s the kicker. Getting the trademark in place is half the battle – the other half is protecting your rights from infringement. Because the trademark motto is: “if you don’t use it, you lose it.”
Meaning, if someone infringes your mark, the Court could find that you’re estopped from enforcing your rights or your mark is considered abandoned if you don’t do anything about it. So, if someone uses a mark that could lead consumers to the mistaken belief that you, your company, and/or your website is affiliated with, sponsored by, or endorsed by them, you have to do something about it. Hello potential legal fees.
So, the ultimate answer to: “When should I get a trademark?” depends on where you’re at in your business, what it is you’re trying to trademark, and whether you plan to protect it.
And the decision should not be made in a vacuum. In fact, the decision should be made in connection with your business’s overall legal strategy.
If you’re not sure where to start in getting a legal strategy in place, you can head to https://nicolecherioden.com/guide/
If your online business is based in California, you can book a Contract Check-Up™ at https://nicolecherioden.com/contract-law/ for a personalized legal strategy session.
*15 USC §1127
**15 USC §1052(e)
This post is an attorney communication under Rule 1-400 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.