By Terry C. Bruner, Attorney at Law
People often ask me about the importance of trademarking business or trade names. More than a few of them express the sentiment that protecting names, slogans, and logos is really “much ado about nothing”. I hear every excuse from “It is unlikely that anyone would steal a logo” to “Even if that did occur, the harm for doing so would really be minimal”. As both a lawyer and entrepreneur, I doth protest, and rather vehemently so!
The truth is that for a relatively small cost, business owners can protect their hard work, brand name, reputation, and creativity through the federal trademarking process. Small businesses comprise the vast majority of trademark infringement victims. Most infringers take the calculated risk of targeting innovative smaller companies because they believe the victims will either a) not take the time to register their names and logos, or b) not affirmatively fight for their rights should an infringement occur. Either scenario is disturbing since it need not be the case. The cost and process for protecting your brand pales in comparison to the injury to your intellectual property when an infringer appropriates your hard work and essentially commits business identity theft.
According to the U.S. Patent & Trademark Office (USPTO), the two primary types of marks that can be registered are:
- Trademarks – Used by their owners to identify goods (physical commodities) which may be natural, manufactured, or produced, and which are sold or otherwise transported or distributed via interstate commerce.
- Service Marks – Used by their owners to identify services (intangible activities) which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.
A federal trademark gives you the broadest protection for your name, slogans, or logos, as a federal registration supersedes any state trademark registration.
Among some of the benefits of having a registered federal mark are:
- Constructive notice nationwide of the owner’s trademark.
- Exclusive right to use the mark on or in connection with the goods or services designated in the registration.
- Access to a formal administrative process for relief against infringers, including monetary damage awards.
- Solid basis for obtaining international registration to be used in other countries.
If, however, your business has a limited geographic scope with no serious intentions of doing business across multiple states, a state trademark registration might provide suitable protection. Businesses in large states like Texas or California can, after all, make a healthy profit just by doing work in those states alone. Whichever path you choose – federal or state – it is wise to obtain some formal registration. Not registering leaves you needlessly vulnerable.
A federal trademark generally costs a few hundred dollars for each registered mark but the trademark application is both technical and legal. Successful applicants usually spend a fair amount of time researching other marks before submitting an application of their own. Outside of the smallest mistakes, most errors in the application will be automatic grounds for rejection and, most importantly, any fees paid to the government will not be refunded. The only cure for an inaccurate application is to resubmit your application with another fee.
The application is considered a part of the trademark “examination” process that will be reviewed by an examining attorney from the USPTO. So while hiring an attorney is not necessary, it is common for entrepreneurs to secure an attorney with experience in trademark representations to prepare their applications. Whether you obtain representation or go it alone, please take the steps necessary to protect your brand. Not doing so could be injurious both to your business reputation and your pocketbook.
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Terry C. Bruner, Attorney at Law, is the Principal and Founder of the Terry Bruner Law Office, a Houston-based law firm that focuses on intellectual property, business law, and multifamily housing transactions. Terry advises clients on comprehensive brand protection strategies as well as trademark and copyright issues. Contact him by phone at 713-242-1661 (direct line), 713-834-1175 (office), or 713-478-1647 (mobile). You can also email him at [email protected] or visit his website at www.terrybrunerlaw.com
