Clients often have questions about how they can best protect their brand name. Many new clients recall having seen a TM symbol or a ® symbol but are unsure as to their meanings. This article provides a brief overview of the world of trademarks, describing what a trademark is, what it protects, and how to register a trademark.
Trademarks (or simply “marks”’ herein) are typically words, phrases, or logos associated with the name of a business. Other, non-traditional trademarks can be filed for sounds, smells or even colors (think of John Deere’s dark green). For simplicity’s sake, we’ll focus on traditional word marks for business names.
The intent of a trademark is to serve as a source indicator, signifying to the consuming public that your company is the source of particular goods and/or services. Over time, the public will come to associate your mark with your company as the source of those goods and services. As well, a trademark can help you prevent others from registering and/or using confusingly similar marks. The TM and ® symbols put the public on notice that you are using the mark in conjunction with your business, and that you have the right to prevent others from using that mark or confusingly similar versions of your mark. The trademark also helps the public distinguish your business’s goods and services from a competitor’s.
One of the easiest things a company can do to achieve some level of trademark protection is to apply the TM symbol next to their business’s name or logo. By simply applying the TM symbol, the business is putting the public on notice that they intend to sell, or are selling, goods or services in connection with that mark. This usage of the mark in commerce, even if the mark is not registered, gives rise to common law trademark rights to that mark, which will typically provide the right to prevent others from using that trademark within the same area for a similar set of goods or services. Although the common law rights are not as comprehensive as those provided by a federally registered trademark, the price is certainly right: it does not cost anything to apply the TM symbol. No forms to fill out–nothing. As such, it is advisable to begin using the TM immediately upon forming a new company. When doing so, the TM symbol can be applied on the business’s website, business cards, products, packaging, invoices, and other business-related items.
The ® symbol is reserved for federally registered trademarks, and use of that symbol with an unregistered mark is considered to be fraud by the USPTO. These trademarks have been submitted for review by the U.S. Patent and Trademark Office, and have been approved by a trademark examiner. The trademark examiner ensures that the mark is unlikely to be confused with someone else’s existing mark. Once the trademark has been approved by the examiner, it will undergo a period of public review where third parties have the chance to oppose registration of the mark on the grounds that the mark is confusingly similar to their mark. Once the public review period has passed, and if no one has opposed the application, the trademark will be allowed.
After the trademark has been registered, the business can now apply the ® symbol everywhere the TM symbol was previously used. The federally registered trademark provides much stronger protection, including nationwide coverage and a presumption of validity. This is increasingly important in an era in which much of commerce is conducted online, and can be done from any location in the country.
Applying for a federally registered trademark is not unduly complicated, and you do not need to be an attorney to apply for a trademark. However, there are a fair number of rules and requirements associated with a federal filing and, as such, it is advisable to have an attorney prepare the trademark application. There are decisions to make, for example, regarding filing basis, which international classes to select, which description of goods and services to use, which types of specimens to provide, etc. Moreover, if there is an opposition to the trademark application, or if a dispute arises after the granting of the trademark, it will be beneficial to have an attorney who is familiar with the mark and, more importantly, is familiar with your business, and with trademark statutes, case law, and rules.
Thus, in summary, trademarks are highly important to any business wishing to protect their brand name and simultaneously prevent others from using that name. Using a TM symbol next to your company name is free and easy to do, and will provide a limited amount of protection. Filing for and obtaining a federally registered trademark does incur some costs, but provides much stronger, nationwide protection. Having a registered trademark is a strong step toward protecting your business’s name and brand.
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