I was asked this last week by a potential client why should I get a trademark, and what will it do for my company. Aren’t I just wasting money filing for a trademark if I my patent is expired on my product? So to give a premise I want to go into a little background of trademarks and what they are.
According to the United States Patent and Trademark Office a trademark is “word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks.”
A trademark can be one of your company’s most valuable asset since it represents the goodwill that your company has built over the years of doing business. For example, the trademark Nike, has built a reputation for making high quality sports clothing and shoes. Nike has built its mark/brand to an estimated $19 billion dollars. When properly used and protected, your company’s trademark can last forever. When deciding upon a trademark for your business you must look at the potential mark from the courts, and USPTO perspective. To be valuable your trademark must be distinctive, which gets the most protection from the courts. Trademarks can fall into 4 different categories:
1. Fanciful – A term create solely for the purpose of being a trademark (such a Exxon, or Nike). 2. Arbitrary – A term that is neither suggestive nor describes any ingredient quality, or characteristic of the products (such as Apple, for its computers)3. Suggestive – A term that indirectly suggest something about the product or service (like LinkSYS, which is used for a brand of networking equipment); 4. Descriptive – A mark that describes some element of the goods or services. Descriptive marks can only be federally registered when they develop a “secondary meaning” which means people use the term when they associate with that particular business.
Trademark rights arise from either actual use of the mark or the filing of a proper application (following which actual use must eventually occur) to register a mark with the United States Patent and Trademark Office (USPTO). Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark. The term of a federal trademark registration is 10 years, with an unlimited number of 10-year renewal terms available.So to get back to the question why should my business/startup register my Trademark, and what is the benefit: 1. It grants you the right to sue in federal court and in certain cases obtain treble damages, and attorney fees; 2. It protects you against others registering confusingly similar marks; 3. It provides nationwide notice that you are now the owner of the mark, and can prevent others from using your mark; 4. Grants you the right to use ® symbol when the mark is used for the goods and services listed in the registration, putting your competitors on notice that your are serious about protecting your rights;5. Empowers US Customs and Border Protection to block imports that infringe the mark or are counterfeits once the registration is separately “recorded” with Customs, putting Customs in your corner in preventing infringement at no additional cost to you; 6. It discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search, thus preventing problems before they even begin; 7. Provides a basis for foreign registration and protects your mark worldwide as you continue to expand your business8. Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, with heightened protection after five years and the possibility of becoming “incontestable,” which can help not only in court proceedings but perhaps more importantly in quickly convincing others to cease using a mark without the need to go to court. 1
If your startup does not have the money currently to put into a trademark, then I would suggest that you file as soon as your funds allow. In the meantime you can put TM on your potential mark, and file as soon as you can.