Trademarks 101 For the Small Biz

What do your logo, your tagline, your website, your client list and the industry white paper you wrote all have in common?  They are your company’s intellectual property and should be protected as if your business depends on it, because it very likely does.

How?  It depends.   Let’s start with trademarks.  If you want to protect logos, taglines, and/or graphics, for example, then you file a trademark application with the United States Patent and Trademark Office (“USPTO”) (Note: if your business provides services rather than products, then instead of filing a trademark application, you file a service mark application).

Have you ever noticed a small “TM” or “SM” at the end of a tagline or name?  That means that the owner is claiming ownership of that name or phrase via a trademark or servicemark.  The “TM” or “SM” means that the actual application with the USPTO either hasn’t been filed yet, or has been filed and is pending.  Even if the actual application has not been filed, use of the “TM” and/or “SM” puts the world on notice that ownership is claimed.

Before filing your application, you have to decide whether the mark is a standard “character mark” or a “design mark”.  A character mark is simply any combination of word(s), letter(s), or number(s) with no design element and without claim to any particular font, style, size or color (e.g. “BocaJump Elgin”).

If you have a design mark (e.g. a drawing of some type), you have to decide whether you are claiming color as part of the mark. In general, you don’t want to claim color because you get broader protection for the mark if the mark can be any color. Instead, you want to just claim the drawing (e.g the “jumping man” design next to BocaJump Elgin).

Another type of design mark is sometimes referred to as a “mixed mark” because it has both a design element and a word.  In these cases, I often advise clients that they should file a separate application on both the design and the word for the broadest protection (e.g. the “jumping man” design and the words “BocaJump Elgin”).

Next you must decide which type of application to file.  If your mark is already being used in commerce, then you would file a “Use” application, which indicates that the mark is being used.  Otherwise, you would file an “Intent to Use” application which means that you haven’t used the mark in commerce yet, but plan to do so, and want to protect it as early as possible.

It is important to note that your mark is not considered registered until it is actually in use with the intended product or service.  Therefore, you are not allowed to use the ® until the mark is registered.

Once the application is filed, it is published by the USPTO in order to give notice to any interested parties who may have a claim of ownership to that name and therefore, want to object to the USPTO’s approval of a trademark for you.  Keep in mind however, that just because someone doesn’t object, doesn’t mean that the trademark will issue.  The Trademark Examiner does his/her own investigation into the appropriateness of your proposed trademark.

If there are no objections by others or the USPTO, then you can reasonably expect the trademark to be registered in approximately one to two months.  The entire process can take 8-9 months or longer.  In the meantime, protect your intellectual property with the appropriate symbols, and seek legal guidance if you have any questions.

This is very brief overview of a rather complex process.  The preliminary search, selection of International Classes and response to USPTO “Office Actions” are also critical parts of the trademark protection process.

But, protecting your trademarks is vital to protecting your business assets and establishing a solid legal foundation for your business.  Don’t underestimate its importance to your success.

Next time we’ll take a look at copyright protection.