Often overlooked, and sometimes taken for granted, your business logo, name, slogan, or any combination thereof is not necessarily protected from imposters. The guiding principle behind trademarking is authenticity of origin. How can a consumer be assured that the product or service they invest in, is consistent with the quality, reputation, and good will that they associate with a prior transaction? Moreover, how can the purveyor of those products or services (you) prevent someone else from imitating their hard-earned quality, reputation, and good will? Trademarking, that’s how. This article aims to provide you, as a business owner, a crash course on the importance, benefits, and protections of acquiring a trademark.

What is ™?

Trademarks operate in the realm of what attorneys refer to as “intellectual property”. Intellectual property is simply a category of rights and protections afforded to ‘creations of the mind’ or ‘creations of the human intellect’. Intellectual property encompasses a vast array of creative, original, and unique intangibles including inventions, literary and artistic works, and yes, even identifying markers of your business. Trademarks are a unique category under the larger umbrella of intellectual property.

Trademarks by definition are “a device (such as a word) pointing distinctly to the origin or ownership of merchandise [or service] to which it is applied and legally reserved to the exclusive use of the owner as maker or seller.” Interestingly enough, the term “trademark” is often casually used to reference both “trademarks” and “service marks”. Specifically, trademarks are applied to goods, while service marks are applied to services. For the purposes of this article, I will refer to them collectively as “trademarks”.

Contrary to popular belief, you do not need to register a trademark to use the familiar symbol ™ that we have all observed as consumers. In fact, your ‘creation of the mind’ is afforded certain protections as soon as it is “published” or, in non-lawyer speak, made generally known by public use. However, take caution, an unregistered trademark is only afforded limited protections.

What is ®?

A registered trademark is entitled to use of the symbol ® which puts the world on notice that the mark is registered, hence the “R” within the circle. An unregistered trademark, or ™, is only afforded intellectual property protections in the geographic area in which your business provides goods or services. For example, if you sold the family ranch and decided to sell window blinds in the San Francisco area, under the unregistered business name “Black Acre Blinds”, generally no one else could legally sell blinds in the San Francisco area under the business name “Black Acre Blinds”. However, there are circumstances where someone could sell blinds in the Los Angeles area under the business name “Black Acre Blinds”. Your customers could be duped into buying blinds from the imposter, leaving you without a sale, and your customer with a subpar product they attribute to you and your brand. I use this general example for illustrative purposes, and many exceptions and caveats apply. Therefore, you should always consult with an experienced business attorney.

For instance, registering the “Black Acre Blinds” trademark with the California Secretary of State’s Office would extend protection of the mark from San Francisco to the borders of California, but not beyond. “Black Acre Blinds” could conceivably be freely used in the remaining 49 states.

The prudent thing to do, particularly if you have goals of expanding your business or simply protecting your brand, is to consider hiring an experienced business attorney to assist you in registering your trademark. Once registered, you can revel in the glory and prestige of your newly begotten ®, and sleep a little better knowing “Black Acre Blinds” is all yours.

How to Go From ™ to ®

The process of registering a trademark can admittedly be a bit daunting. The United States Patent and Trade Office (USPTO) maintains a database called the Trademark Electronic Search System (commonly referred to as “TESS”), which is the database created and maintained by the USPTO. TESS is a database of every federal trademark that has ever been registered or applied for. Prior to applying for a trademark, one must conduct a diligent and thorough search of the existing database to make sure there are no registered trademarks that would conflict with yours. This search, or “clearance search” requires a comprehensive, structured, and imaginative search to weed out all possible conflicting marks, and instill confidence that your trademark application is less likely to be rejected. Rejected applications are not entitled to a refund.

Once a clearance search has been dutifully conducted, the application process begins. Depending on the nature, complexity, and popularity of marks similar to your own, the USPTO application process can take several months. During this time, USPTO attorneys conduct their own search for conflicting marks and evaluate your application for other legal complications. The USPTO may request additional information, such as evidence of the use of your mark in commerce that is interstate, territorial, and between the United States and a foreign country.

Once approved, your mark will be registered within the TESS database, putting the rest of the country on notice that your mark is registered. The benefits of registration, however, exceed the earmark in TESS, and provides the security of knowing that your mark may not be used in the United States, without your permission.

The Benefits of ®egistration

The benefits of registering your trademark largely outweigh the cost associated with doing so. For the purposes of this abridged crash course, I will focus on the more common benefits, but it should be noted that walking into a courtroom with a ® is much more advisable than without.

First, the public is on notice of your mark. Anyone possessing the hope of also using “Black Acre Blinds” will quickly learn through TESS that their hopes have been squandered. This lessens the likelihood that you would need to drag an imposter into court, and pay attorneys to yell at each other over your prized brand.

Second, you will be entitled to the right to adorn your logo, name, slogan, etc. with the coveted ® symbol which has the same effect as the previously mentioned benefit, without the burden of searching TESS.

Third, you will enjoy the right to file a lawsuit in federal court to protect your ®, with the legal presumption that you own the mark. While this may sound mundane, any experienced business attorney can tell you that proving ownership of an unregistered mark in a court of law requires lots of time, documents, and money. Here, ® is all you need.

Fourth, when “Black Acre Blinds” eventually gains the traction and international demand of The Beatles, you can use your ® as a basis for filing for trademark protection in foreign countries. The world is now your oyster.

Lastly, when the imposters of the world take notice of the international stardom of “Black Acre Blinds”, you can register your ® with the United States Customs and Border Protection so that they can stop any efforts to import blinds to the United States that infringe on your ®.\

Your “Black Acre Blinds”

Though it may sound fanciful to contemplate the expanding success of your new business, every company you know today, likely started in a garage, basement, watering hole, or around a family dinner table. Our hope is that this article provided you a general introduction to the process and benefits of registering your trademark. Registering your intellectual property is truly an investment, intended to protect your brand and your customers, therefore cutting corners is not recommended.

Intellectual Property in the Bay Area

For years, the attorneys at Coepio Legal have been helping Bay Area business owners as they navigate the various challenges involved in protecting the brand of a business. Give them a call; your “Black Acre” will be glad you did.