If you’ve spent time and resources developing your brand (or if you plan to in the future), registering your trademark will help you protect those investments. Wondering if a trademark is right for you? Here are five basic pointers to guide your decision.
Who Can and Should Register a Trademark?
Only the individual, corporation, partnership, LLC, or other type of legal entity that owns the trademark can register it. You can apply to register the trademark yourself, but hiring an attorney is likely to save you both time and expense by helping you avoid common pitfalls that can delay the process for years and cost thousands of dollars.
What Should You Register?
You can, and should, register trademarks for the most recognizable aspects of your brand. Those may include your business name, business logo, slogans, product names, product logos, images, designs, and other parts of your brand that your customers recognize. Each represents a separate thing in the trademark world, subject to separate registration. Large companies have thousands of trademarks for virtually all aspects of their brand, including every new product and ad campaign. If you have the resources to do that, go for it. If you are just starting out or simply want to get the most bang for your buck, registering your business name (and logo if you can) is a good place to start.
Where Do You Register?
Your two basic options are state and federal registration. Federal trademark registration usually provides the best protection at the best price (starting around $275). However, your mark is only eligible for federal registration if you have used the mark in interstate commerce. If your trademark is ineligible for federal registration, or if federal registration is too expensive, state registration may still be a good solution. The protections and costs provided by state registration vary state to state. In Utah, you can register your trademark with the Department of Commerce for $50. A Utah trademark provides basic trademark protection within the state and may have a limited deterrence effect against others using the mark in other states.
When Do You Register?
The first person to use a trademark usually gets priority in any subsequent disputes, so the simple answer is: “The sooner the better.” This question usually comes up for startups that have a good idea for some trademark that they aren’t using now but want to use in the future. Current law allows you to register trademarks you are currently using, and also to register trademarks that you have an “intent to use” in the near future. If you register a trademark based on an “intent to use,” and follow up with a properly filed “statement of use” as soon as you begin using the mark, you will get priority as of the first filing.
Registering your trademark is not required. However, federal registration offers several benefits including: (1) Providing notice to the public of your claim of ownership; (2) Allowing you to enforce your trademark in federal court and in some cases allowing you to recover attorney fees and treble (triple damage); (3) Giving you a presumption of ownership and exclusive right to use the mark nationwide; (4) Letting you use the ® symbol; and (5) Giving you a number of other benefits relating to Internet domain names, the U.S. customs service, and more.
Whatever business you are in, a registered trademark can be a valuable asset. If you would like to discuss how you can use trademarks to protect your business, please call or email me to schedule a free consultation.
Mark B. Thornton