SHOULD YOU TRADEMARK YOUR BRAND NAME OR DESIGN LOGO?
So you’ve designed a logo and come up with a brand name, and you’re ready to dive headfirst into your business. Perhaps you’ve considered the possibility of registering your logo and name as trademarks, but you don’t know where to start. Here are a few critical questions answered with the help of trademark attorney Kevin Wilson of Egbert Law Offices:
Do you even need a trademark registration?
Many small businesses are successful without ever having trademarked their name or logo. According to Kevin Wilson, “The short answer to this question is ‘No.’ Any time a person or entity uses a trademark in association with goods or services, they obtain a property interest called ‘common law’ trademark rights.”
In other words, you don’t need a trademark registration to have trademark rights to your brand name or design logo. All you have to do to secure these common law rights is to sell your product or service using your name and logo.
You may be thinking, “Why should I bother registering a trademark if I already have the rights simply by virtue of using the trademark?”
Wilson asserts that there are many benefits to registering a trademark:
“The most important statutory benefit of a registration is that it secures a nationwide right of priority for the trademark owner and constitutes prima facie evidence that: 1) the owner’s registration is valid; 2) that the person or entity is the owner of the mark; and 3) that person or entity has the exclusive right to use the mark in commerce in connection with the goods or services specified in the registration.”
Wilson goes on to explain that, after you’ve obtained trademark registrations for your brand name and design logo, these registrations would be considered evidence in your favor if a trademark dispute ever were to arise. What’s more, trademark registrations are made public and keep others from using your name or design logo, even if they claim to have used it unwittingly.
Can you register a trademark on your own?
Many business owners may prefer to register a trademark on their own without the help of an attorney. Wilson notes that registering your own trademark is “entirely possible.” If this is the route you prefer to take, visit the United States Trademark and Patent Office website, which offers detailed, step-by-step instructions for filing trademark registrations, including how-to videos and FAQs.
What are the advantages of registering a trademark with the help of an attorney?
Although you’d incur attorney’s fees (typically ranging from a few hundred to a thousand dollars) from registering a trademark with professional help, it may be worth the extra cost. Wilson explains:
“You are not allowed to substantively change the identification of goods or services, and you are not allowed to change what is called the “drawing” of the mark after it has been filed. A trademark attorney can help ensure you are filing the correct mark for the correct goods and services. This can be very important, especially since you are not able to obtain a refund of the government fees if the mark is filed incorrectly. Another advantage of registering a trademark with an attorney is that they will include that mark in their docketing systems. This will ensure that you receive reminders of when a Declaration of Use is due (between the fifth and sixth years after registration) and when a renewal is due (between the 9th and 10th years after registration).”
Should you register your name or logo first?
Especially if you are in the business of design, it’s likely that you have both a name and a design logo whose trademarks you’d be interested in registering. Considering the cost of registration fees and potential attorney’s fees, you may want to start off registering only one mark. Wilson advises:
“The best action to take is to register what is called the ‘word mark’ and the ‘design mark’ at the same time. This will give you the broadest protection. If you are going to choose one, however, I suggest to my clients that filing the word mark is the most important since that is how the public would most readily identify your business. A word mark also gives you broader protection since it covers such words in any font and with any design that may be associated with those words.”
Trademark registration can often be a long and confusing process. In the end, however, it protects your business and helps you avoid costly and even more confusing legal problems down the road.
Have you had experience with trademark registrations? What challenges did you encounter? Chime in below!