A trademark (or mark for short) is a distinctive word, phrase, logo, or graphic symbol that is used to identify the source of a product or service and distinguish your products or services from someone else’s. Registration with the U.S. Patent and Trademark Office provides important benefits:
- Registration creates a legal presumption that your business owns the mark and has the exclusive right to use it nationwide in connection with the goods and services listed in the registration. (FYI: The idea of mailing something to yourself to prove when you created it is an urban myth.)
- Registration puts the public on notice that you claim ownership in the mark.
- Only federally registered trademarks are permitted to use the symbol ®.
- Without registration, you cannot sue someone else for trademark infringement in federal court.
- Registration allows your business to register with Customs and Border Protection to prevent the import of infringing goods from overseas. And if you do business overseas, a U.S. registration can be used as the basis for obtaining registration in foreign countries.
Your Mark vs. A Confusingly Similar Mark
Because the purpose of a trademark is to distinguish your products or services from those of your competitors, the basic standard for trademarks is that one cannot be “confusingly similar” to another.
Often, I’ll hear from a prospective client: “I did a Google search and no one else has the exact same name / logo / slogan.” Just because another company’s mark isn’t exactly the same as yours does not mean that we can register your trademark (or that your business won’t be sued for trademark infringement). The question is whether your proposed mark is “confusingly similar” to the mark that is already registered. All too often, small businesses wait for their branding to “take off” before getting a trademark search done. They spend time and money with marketing companies and graphic designers building fancy websites and designing pretty marketing materials. (And let’s be honest—that’s a lot more fun than hiring an attorney.) It’s only later that we run a trademark search and learn that there’s a very poor chance the trademark you’ve put so much effort into will actually get registered.
On the other hand, it’s also not enough to just ignore trademark registration. I’ve also seen a number of entrepreneurs get a nasty cease and desist letter when a competitor learns that they are using a similar mark. Because the law presumes that everyone is aware of registered trademarks, ignorance is not a defense. The end result is that you now have to find a way to rebrand your entire company or the affected product line. Thousands of dollars spent on product labels, marketing, social media campaigns, website development, and so on are now all down the drain. This is why it’s so important to conduct a thorough trademark search before you settle on your branding, even if you don’t think you’ll pursue a trademark registration.
