Learning the legalities of running a business means introducing yourself to a lot of rules, practices, and terminology that can be somewhat confusing.
Today, we’re going to shed light on one legal topic that affects many business owners: trademarks. What is a trademark, what parts of your business can you trademark, and when should you consider registering a trademark to protect your business?
We spoke with Christina Scalera, legal expert and founder of The Contract Shop, which sells contract templates to creatives and entrepreneurs. Her experience spans both growing her own brand and working with clients to build and protect their brands, too.
What is a trademark?
A trademark is a source identifier. Anything that identifies a product or brand as different from others in the market could be considered a source identifier. This can include a unique combination of letters, sounds, symbols, or designs.
For a more concrete list, it’s possible to trademark:
💡 Note: Creative works like art or books are usually covered by copyright, not trademarks.
One thing Christina made clear is that while you can trademark names, they need to be more than just descriptive. As an example, she says, consider Key Smart® key fobs.
“You couldn't just register ‘key fob,’ but Key Smart Inc. has a registered trademark for ‘Key Smart.’ So when they talk about their products, it's Key Smart® key fobs,” she says. Johnson & Johnson is another example. “They sell Band-Aid® bandages. A trademark is always the source identifier, and it can be followed by the generic product category or name. Band-Aid® is the trademark, bandages is the product.”
Which parts of a product name you can trademark apply to the names of anything your business sells, including digital products and services. Trademarks for services are often called service marks.
“For my courses, I can't register ‘wedding photographer contract,’ because it’s completely descriptive, but I could register Legalize Your Biz™, a legal course for online entrepreneurs,” says Christina. “It’s a good trademark because it’s a unique phrase, and it’s not just descriptive.”
It’s also important to note that trademarks and domain names are separate. With domain names, you can register it once and it’s yours. Trademarks need to be used and actively protected. “If you don't use it, you lose it,” says Christina.
How do you get a trademark?
As soon as you start a small business or develop a product, you likely have some source identifiers, including your business name and your logo. The question is, do you need to be thinking about trademarks right away?
There are two ways to get a trademark, and one is more formal (and involved) than the other. You can informally get a trademark by doing business using a name or a logo, and establish your reputation and mark that way (this is often called an unregistered or common law trademark).
This offers some legal protection when you’re starting out, but Christina recommends you consider trademark registration when your business picks up traction.
How to register a trademark in 3 steps
1. Confirm the trademark is available
You can do a portion of this work yourself by following the tips we outline below. However, to get a definitive answer about your ability to use a certain trademark, it is always best to consult with a trademark attorney.
First up, when you have a unique idea about a name for your brand or products, it’s a good time to see whether they’ve already been registered, as part of your competitive analysis. You can do that by looking up your potential trademark using online databases that are maintained by the governments of the countries you do business in, so start in your home country.
Here a shortlist of the databases you may want to check, and remember to check the database for each country in which you do business:
- United States: United States Patent and Trademark Office (USPTO)
- Canada: Canadian Trademarks Database
- Australia: Australian Trade Mark Search
- EU: European Union Intellectual Property Office (EUIPO)
“When searching for your trademark term, use quotation marks to get an exact match, and run a search for each of the terms within the phrase, if there’s more than one,” says Christina. The quotation marks will ensure you’re getting exact matches for your search, so you’re not wading through largely unrelated results.
Even if results do show up for your chosen trademark terms, that doesn’t mean they’re immediately off the table. In the US, trademarks are based on use, so if it’s not being used—even if it’s been registered—you might be able to challenge the registration and claim the name for your business with the help of a trademark attorney.
Christina recommends further research if you do come across a result for a term you want to trademark. For example, someone may have registered a trademark but since gone out of business, and given that US trademarks are based on use, that could signal that the trademark is available.
If you’re finding this is a term, phrase, or name that no one’s using, that’s a great indication it could be available and that you’re ready to take the next steps to register your trademark.
After you’ve searched through the databases, Christina recommends Google as a next step. “Go to Google and run the exact same searches to see what pops up,” she says. “If you find results in the trademark database, you know you’re going to get hits in Google, but you want to see how many and how active they are. Ideally, even if you get a few results, you’re looking to see if there’s been any activity on those sites.”
Finally, make sure to search social media to see if there’s any activity using the trademark you’re considering—tools like Namechk can surface social profiles using your desired name. If you don’t find anything recent, that’s another promising sign.
“If you're finding this is a term, phrase, or name that no one's using, that's a great indication it could be available, and that you’re ready to take the next steps to register your trademark,” says Christina.
2. Officially register the trademark
If you decide you’re ready to officially register a trademark, Christina advises getting in touch with someone who can provide legal advice specific to your business. Consider working with them to perform a more thorough search of what else is out there before you invest the time and resources to apply for a trademark registration.
“Only a licensed attorney would be able to definitively give you advice and say ‘Yes, go out there and use your trademark, and let’s register it,’” says Christina. The process of registering your mark can also be fairly technical and involved, so it meets the criteria of something that’s much better to outsource to an expert.
Remember that the application process for registering a trademark will differ from country to country. Seek advice from a professional who understands the requirements for your specific region.
3. Protect your trademark
Ensuring trademark protection means you’ll need to both consistently use the appropriate trademark indicators, and take action when you notice someone infringing on your mark.
Use your ™ or ® marks
You’ve probably seen them around, but it’s easy to skip over these trademark symbols until you want to use them for yourself. Christina shares a breakdown of what each one means and when to use it:
- ™ : You can start using the ™ symbol on any name or logo you consider a trademark, but make sure that you’ve done all the required research ahead of time to ensure you’re not infringing on an existing mark.
- ®: This is the symbol for a registered trademark, and you can use it once your trademark is officially registered.
Take action against trademark infringement
Protecting your trademarks goes further than marking them appropriately. You also need to watch out for people copying or using your trademarks, or using similar marks in your industry—in trademark law, failing to take action to protect your mark could eventually result in losing your trademark because of a concept called dilution.
“If someone comes out with a product or a brand using a registered mark that you have, or comes out with something that’s really similar and in your industry, that’s an important time to speak with an attorney,” says Christina. “For my clients, I will always reach out to let the other business know that this is a registered mark, and they can’t use it, because it dilutes the value of my client’s trademark.”
Protecting your trademark is a really big deal, and it bothers me so much when people don’t act on infringement. You genuinely risk losing your mark by not taking action.
Losing your trademark happens when you can no longer claim that the original mark, whether it’s your logo or your product names, is a source identifier. The reason is because if everyone in the industry is using the same naming, it no longer identifies something that’s uniquely yours. After all the work and the money that goes into getting a trademark, taking action against infringement is crucial to protect your mark and your investment.
“Protecting your trademark is a really big deal, and it bothers me so much when people don’t act on infringement,” says Christina. “You genuinely risk losing your mark by not taking action. I always ask, ‘How much money did that cost you, because I’m sure it wasn’t cheap.’ It’s the equivalent of buying a first-class plane ticket and then not showing up for your flight.”
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💡 Note: Defending your trademark is something that’s best left to the professionals, especially when it comes to contesting a pending trademark application. Focus on what you do well—running your business and creating great products—and let the lawyers handle the details of protecting your marks.
Trademarks can help protect your business
There’s a lot you can do to proactively protect your intellectual property when you’re running a business, and trademarks are just one part of the overall picture. While they’re not a silver bullet, and you’ll still need to be vigilant for infringement, especially in your industry, trademarks can offer a form of protection for the hard work you put into building a brand that stands out.
What is a trademark?
A trademark is a source identifier. Anything that identifies a product or brand as different from others in the market could be considered a source identifier. This can include a unique combination of letters, sounds, symbols, or designs that represent distinctiveness.
What is a registered trademark?
A registered trademark is a more official form of a trademark, indicating that the trademark has been officially registered with a federal trademark office. Registered trademarks are often indicated with the ® trademark symbol.
Why are trademarks important?
It is important to protect yourself, your brand, your ideas, and your creations. These are the things that make your business or personal brand unique. Without protections like trademarks, anyone can copy or steal your work. Registering a trademark usually gives you exclusive rights to use that trademark for a specific period of time, and does give you legal grounds to take action on theft of your intellectual property.
What is the difference between a copyright and a trademark?
Copyright and trademarks are similar in some ways. They are both forms of intellectual property, which can include tangible things or intangible assets like business ideas or processes. These two forms of protection differ in that they protect different types of intellectual property. Copyright protection applies to creative works like art or books, while a trademark usually protects assets associated with a brand (trade name, logo, etc.). The requirements and registration process for each will differ as well.
How much does a trademark cost?
In 2022, The US Patent and Trademark Office lists its trademark registration fees for TEAS Plus and TEAS Standard as $250 and $350 USD, respectively. TEAS stands for Trademark Electronic Application System and the Plus option is a simpler version of the Standard option that has fewer requirements. For non-US residents, check the trademark office in your country for specific fee information.
How can I register a trademark?
Consult the trademark office in your country to determine the required documents and fees for starting the application process. You will also likely wish to consult with a lawyer who specializes in this area and is familiar with federal trademark registration.
Note: This blog post is for informational purposes only and does not constitute professional legal advice. Please consult independent legal advice for information specific to your country and circumstance.
Feature image by Stanislav Vdovin/Unsplash