Brands are probably the most valuable assets that companies own. This is true for both large companies and startups.
Each of the 10 most valuable brands in the world is worth billions of dollars. Compare these brand values with the market value of the companies owning the brands and the power of brands is obvious.
Trademarks are one of the main components of a brand. A trademark is a brand name, slogan, or logo. It can also be a sound, a color, or even a smell. Pretty much anything can be a trademark as long as it identifies the source of goods and services and distinguishes them from the goods and services of others.
The best way to protect your trademark is with a federal trademark registration. Before pursuing federal trademark protection, however, you should run a free trademark search on the U.S. Patent and Trademark Office (USPTO) database to identify obvious conflicts with pre-existing trademarks owned by someone else.
Even if the free search does not disclose any obvious conflicts, there still might be obstacles to the use of the trademark. The USPTO database contains millions of records, and you will need to make some judgment calls in developing a search strategy. This will result in a margin for error – especially when it comes to brand names since they do not always follow established rules of spelling, grammar, construction, punctuation or meaning. There are similar limitations with a Google search.
The USPTO database is also limited to pending and registered federal trademarks. It does not contain unregistered (or "common law") trademarks that could affect your ability to register your trademark.
For these reasons, free searches are only used to eliminate trademarks that are clearly unavailable. To know whether a trademark is available for registration, you should hire a lawyer to do a professional trademark search for any confusingly similar pending and registered federal trademarks. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. If confusion is likely, then you should not use the trademark.
Assuming your trademark appears to be available for use, then you should file a federal trademark application for the following reasons:
1. USPTO Feedback
The USPTO will give you feedback about your application within a few months of filing regarding possible conflicts with competitors, registrability issues, or other problems that may require choosing a different trademark. One of the most common reasons to refuse registration is a likelihood of confusion between the proposed mark and a pending or registered federal trademark owned by another party. If you did not run a trademark search before filing, this can help prevent you from wasting valuable time and resources on a trademark that ultimately cannot be registered and protected.
2. Avoid Disputes Before They Happen
The information on new trademark filings is made available to the public on the USPTO database just a few days after filing. Competitors who search the database before they file will discover your trademark application and will be motivated to choose a different trademark. Competitors will be even more motivated to select a different trademark after your application matures into a registration.
3. Government Protection
The USPTO will reject confusingly similar marks from later registration, protecting your brand in the process.
4. Nationwide Priority
A federal trademark registration establishes a presumption of ownership of a trademark throughout the country.
5. Litigation Advantage
Registration allows you to sue in federal court, where a judge may grant injunctions, award damages for infringement and – in some cases – allow you to recover legal fees.
6. Social Networking Enforcement
Federal registration can be instrumental in enforcing rights with social networking sites like Facebook, Instagram, Twitter, YouTube, Pinterest, LinkedIn, and Google+. Even though a registration is not required to file a complaint, it is very difficult (if not impossible) to get infringing content removed without one.
7. Protection From Counterfeits
Federal trademark registrations are eligible for recordation with U.S. Customs & Border Protection (CBP). Recorded trademarks are added to a database that the CBP uses to prevent the importation of counterfeit goods.
8. Attract Investors
Investors are generally more attracted to those companies distinguished by a favorable risk/reward profile. Risk is reduced with a trademark registration. Federal trademark protection is also an indicator of established brand value and sound business protection.
9. Foreign Trademark Protection
A federal trademark registration can serve as a basis for obtaining priority and registrations in foreign countries.
10. Reasonable cost
Our lawyers will develop a custom trademark strategy for your business for $775 that includes a professional trademark search and preparing a federal trademark application. Click here to get started. You can also schedule a free attorney consultation on our home page.
Author's Note: This post was originally published in October 2015 and has been updated for freshness, accuracy, and comprehensiveness.