One of the things that sets successful businesses apart is their unique brand; the most noteworthy companies have an unmistakable identity that resonates with their market.
That said, your branding is more than just a catchy name or logo. It’s your business’s fingerprint in a crowded marketplace. And like any valuable asset, it deserves protection.
This is where trademarks come in.
But what exactly are trademarks and how do they work? Can—and should—you register your business trademarks? To answer these, we caught up with some trademark attorneys and asked them to shed light on the most common questions small businesses have about trademarks.
What is a Trademark?
According to trademark attorney Morris Turek, who runs YourTrademarkAttorney.com, “a trademark is a source designation.”
“It’s a name, a logo, a slogan or a character. It can also be a color or symbol businesses use to advertise and sell products and services.”
He continued: “If you were in a supermarket and there were just bottles of soda and no labels on the bottles, you wouldn’t know which one you were buying, right? We need the label, we need the name on the bottle — the trademark — to know if we’re buying Coca-Cola or Pepsi or any other brand.”
These trademarks are used to advertise and sell products and services and to distinguish those products and services from others.
Can You Register Your Trademark?
Not all trademarks are eligible to be registered.
“A good example of a trademark that would not be eligible for registration is a mark that’s deceptive of a product or a service,” Turek explained. “Let’s say your trademark was ‘Organic Superstar Apples,’ but your apples are not organic. That would be a deceptive trademark.”
He continued: “Other types of trademarks that are not eligible for registration are names that are generic. Let’s say you want to use the word ‘table’ and you sell tables. That’s not a trademark; that’s a generic term for the product.”
“If you wanted to use a red cross, you can’t do that. It is a symbol that can only be used by the Red Cross Organization,” he added. “There are lots of different trademarks that are not eligible for registration under any circumstances.”
Should You Register Your Trademark?
There are several factors to consider when you’re thinking about registering trademarks for your business.
“If you absolutely love your brand name and you’d be heartbroken if you had to change it, or if you’ve invested enough heart, time and money into the marketing, branding and the name in your industry—that could be a good signal that it’s time to trademark,” according to trademark lawyer Brittany Ratelle.
Business expansion is another consideration. “If you want to expand to a different revenue stream or expand beyond your local business (e.g., another state or online), then it’s probably time for a trademark,” she said.
On the flip side, you may want to hold off on registering a trademark if you’re in the very early stages of your business.
“Sometimes people come to me and haven’t launched anything yet,” Ratelle explained. “They’ve just been thinking about a business, but they haven’t talked about it or are afraid to share their ideas with others, but they want to trademark.”
“I usually push back a little bit and tell them to get some feedback from their market first because the idea you have in your head may not quite be right, and we want to make sure that it’s hitting who you’re selling first.”
Additionally, a trademark may not be a good fit if you operate in a small, local market.
As Turek put it: “Is the business purely local? Meaning, is it like a gardening service where somebody’s just operating in a very small area? Well, maybe it doesn’t make so much sense to register it as a trademark, especially if you don’t have any plans to expand nationwide or even outside of your state.”
How Do You Register a Trademark?
“Before even considering trademark registration, we want to consider trademark clearance,” Turek said. “We do a search to see whether something is available and whether it would even be eligible for trademark registration.”
Already have trademark clearance? You can kick off the registration process by submitting an application to the United States Patent and Trademark Office (USPTO).
“You file an application with the USPTO,” Ratelle explained. “We expect not to hear back for about nine months. That’s the current processing time. It’s a long wait time, and there’s nothing you can do to expedite it.”
From there, a government attorney will review your application and do their own search.
“They’re going to look at the trademark database, and the main thing they’re looking for is if the trademark is too descriptive or if there’s a likelihood of confusion,” Ratelle said. “If you get a green light from those, then it will move to publication. At this stage, there’s a thirty-day period where anyone else can object to your trademark.”
Assuming you don’t get any opposition to your trademark, then it will go to registration.
Does a Trademark Registration Expire?
“The trademark registration needs to be renewed periodically,” Turek explained. “The first maintenance is between the fifth and sixth year of registration, and you have to file what’s called the Declaration of Use. That basically tells the office that you’re continuing to use the trademark in connection with whatever products or services are in your trademark registration. If you fail to file the declaration of use, the trademark registration gets canceled.”
“The second renewal period is between the ninth and the tenth year of registration,” Turek added. “Again, you file the Declaration of Use indicating that the mark is still in use, and you provide some examples showing the trademark office how the mark is being used. And then after that, it’d only have to be renewed every ten years.”