As a keen observer, I can say that for small business owners few things are as valuable as their reputation. 

You work hard to build a name for yourself and your business and pride yourself in the quality of the goods and services you offer. 

The last thing you want is to have someone else try to profit from your hard work, potentially damaging you in the process. 

Imagine that you become known for a specific product you’ve developed. You gave it a distinctive name that your customers have fully embraced. 

Now let’s say another business sees your success and tries to capitalize on it by offering a similar product of lesser quality and giving it a name that is very similar to the name of your product. 

You then find out that people are buying the competitor’s lesser product, mistaking it for yours or thinking that you gave the other business permission to sell your product. 

That would be more than just unfair, it could be damaging to your business both financially and in terms of reputation. Trademarks are intended to help protect people in that type of situation.  

What Exactly is a Trademark?

The US Patent and Trademark Office states that trademarks are, “a word, phrase, design, or combination that identifies your goods and services, distinguishes them from the goods and services of others, and indicates the source of your goods or services.” 

This includes things like unique product names, slogans, and logos. With a trademark, you have legal protection from other businesses using your intellectual property in ways that may be deceptive or confusing to consumers. 

For example, a few years ago, there was a dispute between Kylie Jenner and singer Kylie Minogue, which began when Kylie Jenner applied to register a trademark for the term “Kylie” for advertising and endorsement purposes, as well as for entertainment services involving personal appearances by a celebrity. 

Kylie Minogue disputed the application, alleging that the trademark is approved for Jenner could cause confusion and would be damaging to her personal brand. It was also noted that Minogue already held trademarks involving the term “Kylie.”

One thing people often misunderstand about trademarks is that when you have a trademark, it does not necessarily prohibit others from using that word or phrase across the board. A trademark only applies to how that word or phrase is used along with your goods and services. 

Is a Trademark the Same as a Copyright or Patent?

Trademarks, copyrights, and patents are all different types of intellectual property protection but those terms aren’t used interchangeably. Essentially, they’re different houses in the same neighborhood. Which one you need depends on what, exactly, you’re looking to protect. 

According to the US Patent and Trademark Office, copyrights cover things like songs, books, software code, and other works of artistic, literary, and intellectually created work that exist in some tangible way, such as on paper or on film. 

Digital formats also qualify as tangible forms. Copyrighted material cannot legally be copied, distributed, performed, or otherwise used for commercial purposes without the copyright holder’s permission. Technically, a logo could be protected by both a copyright and a trademark.

Patents, on the other hand, are intended for things like new, unique, and usable inventions. Things like a machinery design, a mechanical process, and a chemical creation like pharmaceutical drugs would all fall under a patent. With a patent, this prevents others from copying, producing, or selling your creation without your permission. 

Do I Really Need to Register a Trademark?

The short answer is no, not technically. But there are some extremely important benefits to registering a trademark that is worth considering. 

It’s important to note that there is a difference between owning a trademark and owning a registered trademark. There’s no rule that requires you to go through the process of registering a trademark before you can start using it. 

In fact, you don’t even necessarily need to ever go through the process of formally registering your trademark to be able to use it. As long as it doesn’t infringe on an existing trademark, you own a trademark as soon as you start using the ™ symbol in connection with your goods and services. However, if you own a trademark without registering it, your legal protections will be more limited.

If you own a trademark without federally registering it, your legal protection for that trademark will only apply to the geographic region your business operates in. 

If your business strictly operates within a limited geographic region, you could also consider looking into trademark registration on a state level instead of a federal level. But if you want your trademark to be legally protected on a national level, federally registering your trademark will give you more protection. 

A federal registration would be worth considering if, for example, your business is based in one state but you sell products online to people all over the country.

Federally registering your trademark can give you benefits like being included in online databases maintained by the US Patent and Trademark Office, being able to use the registration symbol (®), and the ability to bring infringement cases to federal courts. If you are interested in selling products internationally, a federally registered trademark can act as a basis for obtaining trademark protection in other countries. 

trademark law
source: Image: iStock / utah778

How Do I Register a Trademark? Do I Need a Lawyer?

Registering a trademark doesn’t necessarily require the help of a lawyer. A lawyer can be required in some situations, such as if a foreign-based business wants to apply for a trademark in the US. But if you can represent yourself, the USPTO provides online resources to do things like apply for a trademark and search to see if there are any existing trademarks that could conflict with yours. 

Working with a lawyer to register a trademark can come with a price tag, but they may be able to help you avoid costly delays down the line. Intellectual property can be a very complex area of law and trademark applications are often rejected for a wide variety of reasons. A lawyer will be able to help make sure you are in a good position heading into the process. For example, a lawyer will be able to make sure your application is filled out correctly, help you develop a strong trademark, handle relevant correspondence, and conduct a clearance search on your behalf.

Can You Ever Lose a Registered Trademark?

Trademarks don’t necessarily last forever. The US Patent and Trademark Office requires trademark holders to routinely file maintenance forms in addition to continuing to actively use the trademark for commercial purposes. 

During this process, you will be asked to delete trademarks that apply to goods or services that you are no longer offering. In some situations, a trademark holder could be charged fees in relation to their maintenance forms. If those fees aren’t paid on time, the trademark could be canceled. 

If a trademark isn’t being actively used or hasn’t ever been used commercially, a petition could be filed to cancel that trademark if another person or company would like to register a similar trademark. (Daniel H. Bliss of Howard & Howard outlines the requirements for petitioning for a trademark cancellation and what that process is like.) A trademark could also be considered abandoned if there have been cases of infringement that the owner has not pursued action against. 

Have more questions about trademarks for your business? A lawyer who specializes in intellectual property law will be able to help you understand how the law applies to your unique situation.