I’m launching a new business soon. Should I file for a trademark before I do?

I’m launching a new business soon. Should I file for a trademark before I do?

Traskbritt

Author: Traskbritt

Protecting your startup’s brand is an easy and effective task to check off of your startup to-do list. A trademark is a word, phrase, symbol, design, color or scent that identifies a source of goods and/or services. Generally, a company files a trademark application to protect a brand or logo associated with its products or services. In some cases, a company can also seek trademark protection for its business name.

So how do you get your trademark and then protect it once you have it? Obtaining a proper trademark is part of IP due diligence, and the best way is to speak with a trademark attorney. This article will help you understand trademarks and if you should get one.

What does a trademark protect?

A federal trademark registration can be a valuable tool for a new business as it allows a company to build a nationwide brand. The trademark needs to be associated with a specific set of goods and/or services.  If your trademark is a made-up word, like EXXON, your business may be the only company using the trademark. Other times multiple business can use the same trademark. As an example, DELTA is a registered trademark for air transportation for Delta Airlines, Inc. as well as for plumbing fixtures for Delta Faucet Company.

Should I trademark my new business name or product name?

If you have a have plan to use your business name on your product or to advertise your services, you should consider seeking protection for your business name. Similarly, if you have selected a product name, you should consider seeking trademark protection. Filing for your trademark is one of the standard items on the checklist for your startup legal work and will begin building your IP portfolio.  A federal trademark application provides provisional nationwide rights in the trademark as of the filing date of your application. Of course, in order for your rights to mature, your application needs to proceed to registration.

You do not need to be selling goods or offering services when you file your trademark application. As long as you have a genuine intention to use the trademark in the United States, you can file a trademark application. The trademark office will require evidence that the trademark has been used before a registration certificate issues. 

A business should take the time to select a strong trademark. A strong trademark can be arbitrary – such as APPLE for computers, or fanciful – such as PEPSI for drinks.  Weaker trademarks immediately convey an idea or characteristic of the goods/services to be offered. An example of a descriptive trademark may be COLD AND CREAMY for ice cream. While some descriptive trademarks can become stronger over time, a new business would be better served to select a stronger trademark as it can be difficult or even impossible to stop competitors from using a descriptive trademark.

Once a trademark is selected, a company should conduct a clearance search before using, or seeking trademark protection for, a business name or product name. It is better to learn that another entity is already using a similar name for related goods or services before investing in a new brand.  While a preliminary clearance search can be done by your company, an attorney will have access to more comprehensive databases and can provide an opinion based on their training and experience with trademark disputes. Even if the company isn’t planning on filing for the trademark immediately, they should choose a name based on a comprehensive search and sound advice.

How to protect my new name or logo with a trademark? 

To begin protecting your new name or logo with a trademark, the USPTO also recommends you speak with an attorney and have the attorney file the trademark application for you. 

The most difficult part of the trademark application is determining how to describe and define the goods and services provided in relationship with the selected mark. This is where an experienced attorney again comes into play and can save you from getting your application rejected and needing to apply multiple times. TraskBritt can help.  

Author: Traskbritt