Lawyer Legal Practice

Trademarks 101: Protecting Your Brand in Competitive Market

Building a strong brand that resonates with your target audience is one of the most important investments you can make as an entrepreneur or business owner. But the hard work doesn’t stop once you’ve defined your brand identity. To truly protect the equity you build in your brand over the long-term, you need to consider making trademarks of your name, logo, taglines, and other brand assets.

Trademarks can seem confusing at first glance, but they don’t have to be! In this comprehensive guide, we’ll cover everything you need to know about trademarks, from what they are to why they’re critical to how to successfully register one for your brand.

What Exactly is a Trademark?

Simply put, a trademark is a recognizable sign, design, or expression which identifies products or services as originating from a particular source. The main purposes of trademarks are to:

• identify the source or origin of products and services.
• guarantee consistent quality of products and services from the source.
• advertise, promote, and market products and services bearing the trademark.
• generate brand recognition and loyalty.

When you see the Nike swoosh, McDonald’s golden arches, or Apple’s iconic bitten apple symbol, you immediately know the source of the products. The instant recognition these and other major trademarks have is no accident – it is the result of deliberate, strategic branding and trademarking.

Unlike patents or copyrights, trademarks do not have to be groundbreaking, novel, or unique. They just need to identify a particular company as the source of goods or services. Brand names, logos, slogans, package designs, product features, and even colors, shapes, sounds, or scents can all be trademarked.

Here are some well-known examples of different types of trademarks:

• Brand Names: Coca-Cola, Microsoft, Amazon
• Logos: Apple, Starbucks, Target
• Slogans: “Just Do It” (Nike), “Because You’re Worth It” (L’Oreal), “Think Different” (Apple)
• Colors: Tiffany Blue (Tiffany & Co.), Purple (Yahoo!), Red (Target)
• Shapes: Coca-Cola bottle shape, Hershey’s Kisses tapered shape
• Sounds: Intel Inside jingle, MGM lion roar
• Scents: Play-Doh distinct scent

As you can see, almost any unique identifier associated with a brand can function as a trademark.

Why are Trademarks Important for Brand Protection?

There are several key reasons why trademarks are critical for protecting your hard-earned brand:

1. Trademarks Deter Confusion

One of the primary functions of trademarks is to prevent customer confusion about the source or origin of goods and services. When your brand name, logo, and other assets are protected through trademark registration, it prevents competitors from copying them and “passing off” their products as coming from your company. Consumers can easily identify official brand merchandise.

2. Trademarks Support Brand Reputation

By preventing unauthorized use, trademarks help to control the user experience and maintain brand integrity. For example, a poorly made product with your logo on it has the potential to negatively impact perceptions of your brand. Trademarks allow you to police proper usage and prevent dilution of brand reputation.

3. Trademarks Enable Legal Recourse

If another company uses your trademarks without permission, registered trademarks give you strong legal grounds to get them to stop infringing on your rights. You can demand they cease use of your intellectual property and also sue for financial damages. Without a registered trademark, it can be much more difficult to prosecute infringement.

4. Trademarks Increase Brand Equity

Companies invest tremendous time and money building their brands. Trademarks help ensure you fully benefit from that investment by making your brand recognizable, trusted, and distinguishable in the marketplace. The goodwill and equity that is built enhances the overall value of the brand over the long run.

5. Trademarks Can Be Licensed and Monetized

Once you have registered trademarks, you have the ability to license them out to partners and receive royalty payments in return. For example, Star Wars may license its trademarks out to toy companies. Owning registered trademarks opens up additional potential revenue streams through strategic licensing.

As you can see, trademarks are critical assets that protect your branding, avoid confusion, strengthen legal rights, and create financial opportunities. The next step is learning how to apply for and register trademarks of your own.

How Do You Trademark a Brand Name, Logo, and Other Brand Assets?

The process for federally registering trademarks in the U.S. involves several key steps, which we will cover in detail:

Conduct Thorough Trademark Searches

Before filing any application, it is essential to thoroughly search existing trademarks to ensure yours will be unique enough to qualify. You generally want to search:

• USPTO Databases: Review registered and pending federal trademarks for potential conflicts. Pay attention to your industry.
• State Databases: Check state records, since state rights can preempt federal rights. Search databases like TESS.
• Google Keywords: Search for your brand name keywords and variations to see if others are using them.
• Domain Registrations: Search sites like GoDaddy and Domainr to see if domains using your branding are taken.
• Social Media: Check Twitter, Facebook, Instagram, and LinkedIn for handles, pages, or groups already using your branding.
• Amazon: Search Amazon listings for use of your potential branding and trademarks.

Thorough searching identifies any conflicts early so you can modify branding if needed. If your trademarks are too similar to existing marks, registration will be challenging.

File Your Trademark Application with USPTO

Once you’ve conducted searches and are confident your branding is registrable, you can file your federal trademark application online via the USPTO TEAS system. Some key information you’ll need to provide:

• Name and address: The name and mailing address of the person or legal entity that owns the branding assets to be protected.
• Goods and services: The types of products/services that will bear the trademarks. Be as accurate and specific as possible.
• First use date: When the trademarks were first used in commerce. New applications must be currently in use.
• Specimen: Examples showing how the trademarks currently appear on goods, tags, websites, etc.
• Filing basis: Section 1(a) use basis or Section 1(b) intent-to-use basis. 1(a) requires proof of active use.
• Fees: The TEAS system handles payment. Fees range from $225-$400+ per class of goods/services.

Working with an intellectual property attorney is advisable, as they can ensure higher quality applications with maximum scope of protection. DIY applications often result in narrower rights.

Respond to Any USPTO Objections

After filing, USPTO examiners will review your application to assess registrability and may issue one or more “office actions” if they find deficiencies that must be overcome. Some common objections:

• Likelihood of Confusion: Examiner believes your mark looks or sounds too similar to existing marks.
• Merely Descriptive: Your mark only describes products/services rather than indicating source.
• Generic Terms: Your mark uses words that are the common or generic name for the goods.
• Specimen Issues: Your specimens don’t show proper use as claimed or are digitally altered.

You or your attorney will need to carefully respond to each objection and argue against them or make modifications when warranted. Most applications require responses to reach approval.

Pay Issuance Fees and Finalize Registration

Once all objections have been satisfied, the USPTO will issue a Notice of Allowance. To complete registration, you’ll need to pay $100-200 in issuance fees within 6 months. Once paid, your trademark will officially register and you can use the ® symbol.

Term is 10 years. You’ll need to file maintenance documents and renew or the rights will be lost. Work with counsel to ensure proper ongoing protection.

Don’t Wait – Apply for Trademark Protection Today!

We hope this comprehensive guide has helped demystify the trademarking process for you. The key takeaways are:

• Trademarks are critical for brand protection and prevention of consumer confusion.
• Conduct thorough searches before applying to the USPTO.
• Provide complete and accurate application information to cover all your brand assets.
• Be prepared to respond to USPTO objections with help of counsel.
• Renew and maintain trademarks properly to preserve exclusive rights.

Strong brands take years and significant investment to develop. But trademarks provide the means to protect that hard work and fully capitalize on it. Don’t leave your branding vulnerable – take the proactive steps today to trademark your valuable intangible assets. Reach out if any questions arise along the way!