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What’s in a Trademark?

December 2, 2019 | Intellectual Property

So you started your own business – good for you! I recently did the same thing, so I’m right there with you. You’re probably in the middle of creating a business entity, getting a phone line and physical address, setting up a website, etc. There just aren’t enough hours in the day to get this all done.

One thing you can wait on is starting to protect your trademark, right? Wrong! Protection efforts for your trademark should start as soon as you conceive of a good trademark for your business.

The first step is to conduct a proper Trademark Search. There are many online businesses that claim to be able to conduct a Trademark Search, but most of those businesses do not engage an attorney to conduct the Search or review the results, so the Search may end up being less comprehensive than it should be. A proper Trademark Search should always be conducted and analyzed by a licensed attorney.

The second step is to prepare and file trademark applications that will protect your trademark. The U.S. has a mixed first to use and first to file system. This means that, as soon as you begin using your trademark in association with the sale of goods/services, you do begin acquiring trademark rights. These are known as your common law (unregistered) rights. However, those rights are usually limited to your geographic scope of use and are not as comprehensive as a state or federal trademark application/registration.

A U.S. trademark application can be filed either on an Actual Use basis (declaring sales of your goods/services in interstate commerce across state lines) or an Intent to Use basis (declaring that you have a bona fide legitimate intent to sell your goods/services bearing your trademark in interstate commerce across state lines). U.S. trademark applications/registrations grant you nationwide constructive rights to use of your mark, even if your actual use is limited to two or more states. State trademark applications protect your use of your trademark within that state.

So why should you start protecting your trademark now? In short – the sooner, the better. The sooner you begin use of your trademark and prepare and file U.S. trademark applications, the sooner you will begin obtaining trademark rights that you can use to stop infringers. Priority is key.

In addition, U.S. trademark applications grant numerous additional benefits, including:

  • Exclusive nationwide constructive rights to use of the trademark, even if you are only using that trademark in several states;
  • Use of the ® symbol (upon registration of your trademark);
  • Presumption that you own the trademark;
  • Presumption that your trademark is valid;
  • Puts others on notice that you are using a trademark for the applied-for goods/services and can be persuasive when asking an infringer to stop using an identical or confusingly similar trademark;
  • Can assist in enhancing damages (although rare);
  • Can assist in enforcement efforts against cybersquatters that have purchased domain names that include your trademark;
  • Attracts investors and increases the value of your business, and can also be used as collateral in financial transactions;
  • Grants you the right to use the Madrid Protocol, a system that makes it easier to file foreign trademark applications;
  • Helps prove fame that can be used in proving dilution of your trademark (a cause of action that is separate and distinct from likelihood of confusion); and
  • The right to seek enforcement of your trademark with certain entities and agencies like the U.S. Customs and Border Protection, Amazon Brand Registry, Alibaba, social media platforms like Facebook, LinkedIn, and Instagram, etc.

At the end of the day, good for you for starting your own business. Doing so is a giant leap of faith that can affect and influence all aspects of your life. However, now you know that protecting your trademarks immediately should be an essential first step – and not something you can put off for later.