Trademarks: If It’s Worth Building, It’s Worth Protecting

You spend a lot of your time and money building your brand, promoting your products and growing your business.   Your company name and products are becoming well known in the marketplace.   You must protect your investment and trademarking is one of the best ways to do that.

A trademark consists of a word, a drawing, a sound or shape which aims to distinguish your products and services from those of your competitors.

Trademark It Sooner Rather Than Later

I recently read an article in the New York Times regarding an increasingly common trademark dispute.  In this case, it was about a business that launched a food product in 2004.  Over the next eight years they built a sizable business.  Last year they decided to trademark their product name, but their trademark application was contested by a much larger food company.  The smaller company has already paid more than $1 million in legal fees and the trademark dispute is far from over.

It is wise to trademark your company name or product name prior to launch.  You need to ensure that the trademark is available and that you’re not infringing on another company’s trademark.  Finding this out after you built up your brand in the marketplace is a costly and unnecessary mistake.

The Internet Has Reduced Your Trademarking Cost

Trademark law is often complex, so getting a trademark attorney involved is really necessary.   With US attorney fees typically $300-$500 or more per hour, however, your trademark application will cost you thousands of dollars (and that’s assuming things go smoothly, which is often not the case).   If the trademark office requires clarification of your application or your attorney needs to file additional paperwork, the cost will continue to grow.

If your application is challenged, you can avoid a $1 million trademark dispute by simply choosing a different trademark.  Choosing another trademark may be frustrating if you’re trying to launch a new product or business, but if your company has already been launched, choosing a different trademark can dramatically reduce the value of your company.

Outsourced services are available that can reduce your cost to less than $1000 and some even include occasional free consultation with a trademark attorney throughout the process.

A Rose By Any Other Name

Your goal for a trademark is to come up with a word or phrase that is simple for your target market to remember.  You need it to be original and inventive.   Some great examples of trademarks are the Google name and the Apple logo.

Even if your business is just a domain name, you need to ensure it is defendable as your potential trademark.  It is not always simple to determine if someone else’s trademark is a problem for you.   For example, an existing trademark for XYZ for health products may not prevent you from buying and using XYZ.com for camera products.  However, Pepsi.com could probably not be used by anyone other than PepsiCo, Inc, for any product, because their trademark is so well known that most people would assume the website is related to PepsiCo.

Research Your Trademark Before It’s Too Late

Trademarks are generally registered in specific jurisdictions and only valid where they are registered, such as the USPTO (U.S. Patent & Trademark Office), the CIPO (Canadian Intellectual Property Office), IP Australia and the UK Intellectual Property Office, for example.

Before making a formal application for trademark, you need to do some research.  Let’s say you were looking to trademark the term “BRIX Ahoy”

• Search the Internet for the following terms (including the quotes): “BRIX Ahoy”, “BRIX”, “Ahoy”.  Identifying any businesses that are using these terms, particularly if they are in the same type of industry that you are.
• Search the existing and pending US federal trademarks by searching the USPTO online database.  There are over 2 million federal trademarks.
• Search the existing and pending US state trademarks.  There are over 1 million State trademarks.
• Search for common law use.  Without registration with the USPTO or with the Secretary of State for State trademarks, a company can potentially have common law rights to a trademark if they can demonstrate substantial use of the mark “in the ordinary course of business”.  There are more than 13 million common law uses within US.

There is a reason why you are seeing more and more “interesting” trademarks like “Etsy”, “Pinterest” and “Tumblr”;  the more “interesting” and distinctive your mark, the less chance it will  infringe on any existing mark.   However, this approach may not be simple for your specific target audience to remember or even spell.

If you are patient and willing to do the research, you could find the right trademark for your business.  It may take a few attempts before you can make it through the above research without finding serious conflicts or similarities.  Each time a potential conflict is found, you will need to determine whether or not there could be potential confusion between the two companies when used in commerce.

Trademarks help to increase the value of your brand and your company.  The trademark “Kleenex” is a good example of this.  If your business is worth building, then surely it is worth protecting your brand with a trademark.  On Marketing Outfield, fixed price marketing services are available from service specialists to create logos, research potential trademarks and complete the trademark/logo application.