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A brand is the mental or emotional image of your business or product that automatically appears when someone sees your company’s name, slogan or logo. It’s your business’s personality or reputation, and it’s critical that an owner holistically and methodically builds and reinforces the right brand. A key component of this strategy is your ability to legally use the brand and ultimately restrict others from diluting it.
Trademarks versus patents and copyrights
As you build a brand, how do you best support and protect it legally? To answer that, it’s important that we have a basic understanding of the three main types of intellectual property — copyrights, patents and trademarks — and be able to distinguish which one is important to branding (spoiler, trademarks are ultimately the key to protecting your brand).
First, copyrights protect original “works of authorship,” such as writings in a book, a movie script, words from a speech or parts of a song — you may remember Ed Sherran’s recent court battle with Marvin Gaye’s estate over their allegation that Sherran’s “Thinking Out Loud” infringes upon elements of Gaye’s “Let’s Get it On.”
Copyright provides a financial incentive for authors to create new works and make them available in the marketplace. While registering a trademark provides additional advantages, the simple act of creating and fixing a work that is sufficiently original is enough to claim rights over the work.
Second, patents protect the rights of inventors over their inventions, giving them the ability to monetize them and to legally prevent others from making, using or selling the invention without the inventor’s permission. Patents come in three varieties – utility patents (which represent nearly 90% of all patents), design patents and plant patents. Consider the world without patented inventions such as the light bulb, smartphone or internal-combustion engine.
Finally, trademarks protect your brand, including logos, slogans and brand names. Think of the Nike brand, its swoosh logo and its slogan of “Just do it,” which reinforce its differentiated brand, and communicate the type of proactivity, decisiveness, empowerment and relentless innovation that are emblematic of Nike’s brand. Federal trademarks are managed by the United States Patent and Trademark Office (USPTO), which reviews and approves or denies all trademark applications.
The power of federal trademark rights in protecting your brand
If you own a business, you may already own a trademark without realizing it. Under state common law, simply using a word, symbol, design or slogan to distinguish your company or product from your competitors creates trademark rights. These trademark rights include the ability to prevent others from using the same word, symbol, design, or slogan for the same class of goods or products in the local market and the right to insert “TM” by the mark to reinforce the fact that you are staking a claim to these rights.
While you can become a trademark owner simply by using your trademark to distinguish you as the source of the goods or services, these state common law trademark rights may be too limited to support your needs. Consider that federal trademarks provide for the following unique benefits above and beyond state common law trademarks:
- Nationwide priority and protection of your branded trademark versus protection limited to a city or state;
- Clarity around ownership of your trademark;
- Right to use the symbol ® with your trademark versus “TM”; and
- Use of federal courts to protect your rights and special federal remedies against infringers.
How to obtain a federal trademark
You can directly apply for federal trademark protection through the USPTO‘s site. The process, which starts with an application and ends with a denial or grant of a registered trademark, will generally take 12 to 18 months.
The first step in the process involves vetting your product name, logo or other brand image to ensure it’s eligible for trademark protection. It isn’t already used by another for your type of goods or services. Your trademark probably won’t be registered if the mark is likely to confuse with another protected trademark, is generic, is “merely descriptive” of your product or is a person’s last name.
Further, you should also check your mark against registered trademarks on www.uspto.gov and through general web browsing to ensure that a mark that is otherwise protectable is not being used by another in commerce. If you determine that your trademark is unlikely to be granted, save yourself the time and filing fee and either look for another mark that can be protected or continue to use the mark locally with its inherent limitations.
Once you’ve vetted the mark, you can prepare and apply the Trademark Electronic Application System, or TEAS. It’ll then be assigned to a USPTO examining attorney, and you can track the progress of your application by using the unique serial number assigned to it.
If the examiner decides that the mark meets the minimum requirements for registration, the examiner can approve the mark for publication in the Trademark Official Gazette, which then permits those who disagree with the registration to file an opposition. If either the examiner questions your ability pre-publication to register the mark or someone else objects once it has been published, you’ll need to respond to these concerns and convince the USPTO that you have the right to register the mark.
The process may sound complex, but as a U.S.-based applicant, you can file your trademark application without hiring an attorney. However, handling the process on a D-I-Y basis can increase the complexity and likelihood of rejection, so you should consider if it’s worth investing in counsel fees to hire an attorney (typically less than $5,000) with experience with the federal trademark process.
If you’ve gotten past the 30-day post-publication review and have emerged unscathed, your mark will be registered after another 3 or 4 months. At this point, your mark will be an officially registered trademark entitled to all of the protections and usage rights under Federal law.