By: Entrepreneurship & Innovation Clinic Student
November 2016
One of the best ways to protect your brand is to get a trademark. A trademark is a form of intellectual property that can help protect a business's brand. A trademark itself is a mark of some kind, generally a word or design, that denotes the source of a good and is used in commerce. If these conditions are all met, the mark can be registered as a trademark. An example of a trademark would be the brand CocaCola. This is a word mark that denotes a specific product (a cola drink) that comes from a specific producer.
Most states have some sort of trademark protection. However, the best way to completely protect your mark is to register the trademark with the federal government at the US Patent and Trademark Office (USPTO). A registration here will give your mark trademark protection throughout the entirety of the United States, while most state protection is only within the state or local area. Therefore, although generally states give common law protection at a lower rate, possibly without any cost, the cost of registering a trademark with the USPTO could be outweighed by the national benefits received, particularly if a business plans on having a presence in multiple states.
Most start-ups and small businesses should consider getting trademark protection as it prevents other people from using your mark. Determining what you want your trademark to be may be one of the first things a start up wants to consider, even before deciding on and creating an entity. This is because a company (or other entity) can trademark its name, its products, services, and anything else that is used in commerce. A great first step is to look up the name you want to use and to see if it has been trademarked already. The USPTO allows individuals to search through already taken trademarks. If your mark is not there, then you are free to register and use it. Although a trademark needs to be used in commerce before it can actually be protected, the USPTO also lets individuals pre-register their mark with an intent to use registration. This gives you some time to create your entity, start developing and producing products, etc. while still having the mark protected.
Unfortunately, early trademark protection may not be financially feasible for some start ups. Therefore, it is advisable that start ups continuously check the USPTO to see if their trademark has been registered by someone else. Although there is no way to predict whether or not it will be taken soon, it is useful to know whether or not it has been taken for future planning. This will allow you to adjust how you brand other things, such as products or services down the road.
So what should you do if your trademark has already been taken? The first step is to determine whether or not what you plan on using the trademark for is what the trademark has already been registered for. When registering with the federal government, a trademark must be assigned a class of use, generally a type of product or service. For example, imagine a company named King sold headphones. If someone who sold fruit wanted to name their business King and trademark it, they would be able to. Trademarks can only protect the type of goods they are registered for. If, however, King that sold headphones decided to also start selling fruit before the other King sold fruit, and added an additional registration, they would be able to use the mark and the second company couldn't. Therefore, if your mark has been taken but it is in an unrelated class of goods or services, then you are free to register the mark and use it for yourself.
Sometimes though, you will run into a circumstance where you've already got your business formed, a product idea ready to go, and branding all set before you realize that the name and trademark you actually want has been taken. There are several ways to remedy this situation. The first thing to think about is your business name. If the name has already been trademarked by someone else, you may wish to change your name in order to protect yourself from infringement liability. This is not a particularly difficult process. Although it varies state by state, most, if not all states, have methods of changing an entity's name. This may not be ideal, but it does help to protect against infringement and allows you to develop a new way to protect your brand.
Ultimately, if you do end up losing out on the trademark race, the best solution is to change your own branding, unless you've already started to sell your product and have a growing user base. In that case you still might be able to get some protection. Most states have some sort of common law trademark protection, at least for the area that you've been selling in. These protections occasionally carve out limitations on federal protections if you can show that you've been in the area longer and have generated enough goodwill and brand recognition. Thus, even if someone trademarks your mark, as long as you've been using it before and stuck to a geographical area you should still be able to use the mark.
For those who are less averse to risk, if the trademark has already been registered and you have not yet used it in commerce, you may wish to simply go ahead and use the mark in your geographical area. You may still be able to get protection if the registered trademark owner has not yet breached the market in your area. Of course, this method has significantly more risk associated with it, and you may not win on an infringement case here.