Continuing our series Should You Register Your Trademark?
Part 2 will explore the importance of goodwill in the marketplace and why it is important to act quickly on protecting your trademark and brand.
But first, it may be helpful to set out some of the basic values of trademarks to your business.
The Importance of Establishing Trademark Rights ASAP
A trademark is the most important asset of any business. As long as it is used, it just gets stronger and represents increasing goodwill of the business. A trademark may be words, letters, numerals, designs, or any combination of them. It may be referred to as a logo if it includes some design aspects, or simply, as a “mark.”
To build a brand it is imperative that you register your trademark and that should be done as soon as you have chosen your mark, have had a professional search done and the results professionally evaluated (see Part 1 of this series for more information), and the search shows that there is no clear conflict with any prior mark.
After an application to register your mark is filed in the United States Patent Office (USPTO), it is examined by an examining attorney at the USPTO to see that it complies with the relevant legal requirements and is not in conflict with a prior mark on the federal register. The mark is typically accepted after some communications are exchanged between the examiner and your attorney and is then published to allow anyone who feels they may be damaged if your mark is registered to oppose registration of your mark. If there is no opposition, the time from first filing to issuance of the registration for your mark is around one year.
It is important to note that a trademark registration in the US does not establish any rights in that mark in any foreign countries.
Business A has been in business for ten years, they have consistently applied their unregistered trademark to all of their goods, signage, and their website. They did not find it to be necessary to register their mark. Then one day they received a Cease and Desist letter from business B who has a registered trademark similar to business A’s mark which may create a likelihood of confusion. This scenario is just the beginning of a potentially long and costly legal proceeding. Now business A is put into a position to defend their trademark and, essentially, to operate during the legal process without a registered trademark. After back and forth litigation they may ultimately lose the case and then must quit using their logo and start all over. In this scenario business A not only loses its possibly long established goodwill in the marketplace but they must immediately begin the process for finding and, hopefully, registering their new trademark and starting from scratch to build goodwill anew.
The Lesson: The cost of protecting valuable IP should be included in your beginning budget.
As a good start in establishing your trademark and building your business goodwill in the marketplace, we suggest that you contact an attorney before you begin the process of using your potential mark on any of your business services, products, web pages, or signage. The Maxham Firm has extensive experience with advising on and filing and prosecuting trademarks through to registration. It is important, but not a legal requirement, to have a professional search done and the results evaluated by a knowledgeable attorney to make sure moving forward with your trademark filing is viable and cost efficient. If the search results show that business B or some other entity has already filed to register a mark similar to yours, you can save many thousands of dollars by shifting to an alternative mark at the beginning of your venture instead of dealing with potential setbacks in the future after initial goodwill in your business has been established.
Simply put, by opting to invest in your company’s IP early on, you have a good chance to avoid the pitfalls of infringement which not only saves you money but also protects your earned goodwill.
Written by: Lawrence A. Maxham
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