Trademarking Your Brand

Starting a new business is an exciting endeavor that comes with great responsibility. Unfortunately, many business owners invest the vast majority of their time in operations and revenue streams, but forget about a critical component of the business: the brand.

First and foremost, choose a name that reflects the breadth of products or services offered. Be methodical, and take the necessary steps to ensure the brand is unique.

Retaining an attorney who focuses on Intellectual Property law, specifically Trademark Law, is a wise decision. A trademark attorney will be able to guide you on the law, but also advise you on the benefits of securing Federal Trademark Protection for your brand.

What is a trademark?

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes a source of the goods of one party from those of others (i.e., cosmetic creams and preparations). You may also see the term “service mark” used interchangeably with “trademark.” For clarification purposes, a service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods (i.e., med spa services).

Seeking registration is not mandatory. A business can establish “common law” rights for a mark based on use of said mark in commerce. However, there are several advantages of registration, which include 1.) a notice to the public of the registrant’s claim of ownership of the mark; 2.) a legal presumption of ownership nationwide; and 3.) the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

A company with either a presence or operations outside of the United States should bear in mind that US Trademarks do not provide exhaustive rights around the globe. That being said, a trademark owner should consider seeking trademark protection in each of the countries/jurisdictions where they do business. This can be accomplished in many ways, such as by retaining local counsel in the operating jurisdiction or through a single filing utilizing the Madrid Protocol.

The Madrid Protocol is a system adopted by the United States, which allows a US trademark holder to file trademark applications in up to 122 countries. A complete list of the countries that are members of the Madrid System is available online: wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.

Although a trademark holder can file applications in a number of countries through the Madrid System, the trademark holder will be required to retain local counsel in the event a refusal is issued or opposition or cancellation proceedings are initiated. Nevertheless, the Madrid System serves as a cost-effective means for those seeking trademark protection abroad.

Do Your Due Diligence

It is essential to perform a trademark search to determine whether or not the brand you’re pursuing is available, identify potential competitors, determine whether the domain names associated with your brand are available for purchase, and pursue the trademark registration process. A trademark search enables a business owner to avoid the adoption of a brand that infringes upon the rights of existing brands in the marketplace. A business does not want to find itself in a position where it spent substantial time and resources on a brand that it cannot legally protect. This is why these initial steps related to brand adoption are imperative to all businesses.