Your company’s name and logo are an important part of the identity of your brand and business. Whether you are newly formed, or a company that’s well established — if you are investing in advertising you should ensure you’ve properly secured your business name so no one else can use it. Registering your trademark is crucial in notifying others that your company’s name, logo, tagline, etc. are your property. It gives you the exclusive right to use them in connection with your services or products. Applying for a trademark protects your original ideas from being used by someone else.
There are circumstances in which you may not need to trademark. For example, if you own a small business that operates in one state and you don’t plan on expanding into other markets, you don’t necessarily have to register to trademark your name. You already have the right to use it in your market if you have registered your LLC or corporation with your individual state, which most businesses do. On the flip side, just because you have formed an LLC or corporation let’s say in MA, for example, doesn’t mean that no one else can use your business name in that state. They just can’t necessarily register it under the same name. If you don’t trademark your company name, you have no real legal claim to it. So, if you plan to expand your business into new markets, it’s wise to register your trademark.
In most circumstances, it seems wise to register to trademark your company identity. A no brainer, right? You would think, but we’ve seen companies fall victim to not protecting their name all too often. For instance, a client comes to us with a business name and logo they’ve been operating under for decades, but they’ve never taken the necessary steps to legally protect it, despite how successful they’ve become and how large they’ve grown. Or a client will initiate a full rebranding and realize when they go through the motions of trying to trademark their company name, logo or slogan, they can’t protect it. There could be another company in the same line of business using the name, or something similar trademarked already. It’s always a good idea to make sure you aren’t infringing on someone else’s trademark from the get-go, especially before investing in a campaign to rebrand.
A story comes to mind whenever I’m advising a client on trademarking. We had just begun working with a new client on a brand identity project. During our first kick-off meeting with their team to go over the new product line and their company name (which they had come to us with), I asked if they had cleared the name and secured the trademark. The CEO assured me that they had done their research and the name came up clean. I suggested we run an official search before they began spending money with us. It was a significant financial marketing investment afterall. But they insisted they wanted us to proceed. They were $30K into the project when we had to pull the plug due to a conflict with the company name, and we had to scrap the work we’d done (not to mention the sizeable investment our client had already made). We had to find a new name, clear it, trademark it and redesign everything. It was an unfortunate circumstance that could have easily been avoided.
So how do we at HGX typically go about guiding our clients through trademarking their company mark? Here’s our process, step-by-step.
First we undergo a trademark knock-out search to identify if there are any conflicts that can be found that have the potential to prohibit us from obtaining trademark approval. We use various resources at a few different levels to search including (but not limited to) the United States Patent and Trademark Office (USPTO) database. It is a low-cost preliminary step that can often identify issues BEFORE filing and spending the full fee to register. Search can take about 1 week to complete.
We review the findings acquired in the knock-out search with attorney assessment and professional opinion. Once we deem that the name, slogan or logo isn’t already being used, we move on to the next step.
We file with the USPTO. This is NOT a guarantee that it will or won’t pass, it simply means that we think it has a pretty good shot at securing Trademark. It can take up to 3-5 months to process and hear back from the patent office on whether the trademark has been approved or rejected. It’s important to note that once an application is filed, there is not a whole lot that can be changed. Sometimes our attorney can fix a trademark application with a simple phone call, or sometimes we have to completely re-file it. Also key is checking-in regularly with the USPTO to make sure our application is moving through the process as it should be.
If our trademark request is approved we have 6 months to file proof of use in the marketplace. We cannot guarantee that the USPTO will grant trademark ownership until we have received notice of approval. Any client working with us on brand identity development proceeds at their own risk until we receive trademark approval. We always recommend that we hold off on design and development of their brand identity until we reach this final stage of approval and the trademark has been assigned. You can guess how many clients are patient enough to wait (very few), but they are proceeding at their own risk!
Filing a trademark application APPEARS to be a straightforward process of filling out online forms. However, anyone that isn't an attorney should NOT be assisting a company in filing a trademark application — whether on their own or through DIY legal sites.* Even if the trademark office does accept the filed forms and eventually approve the trademark, if it’s not filed by a professional, the application (or the issued registration) could have weaknesses should it ever come to enforcement/litigation. Someone that isn't aware of the law or what arguments will work can create a big mess.
The Aftermath of Trademark Approval
So you’ve made it through to the end and have been granted trademark approval, congrats! You can breathe easy, right? Not quite. Although the USPTO will ensure that no other party can register for your trademark, it’s up to you to protect your name or mark against unauthorized usage. So what can you do? If you have the resources, hire a professional to monitor the marketplace and ensure no one else is infringing on your trademark. If someone is using it, legal action may be taken which includes sending a cease and desist letter or filing a trademark infringement lawsuit. And besides monitoring to make sure no one is using your trademarked property, you must also make sure to file maintenance documents to prove that your trademark is still in use. At around the 5 or 6 year mark, proof of usage is crucial, as well as at around the 9 or 10 year mark.
Trademarking your company’s name, logo or intellectual property is important and more than just a formality. As you’re growing your business, think about your particular brand protection needs and make sure you take the right legal steps to enforce them.
*[Note: Online legal services don’t offer a ton of value even at the search phase since they only offer direct hit searches. For example “Battman” or “Starbucks” produce zero results even though both of these marks would be rejected by the trademark office since you can’t file anything that’s similar to an existing trademark. This is just one example of the inconsistencies of a site like this.]