Protecting Your Brand: What You Need to Know About Trademarks

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Much of today’s advertising is defined by the use of distinct and unique trademarks that resonate with the consumer. Think of McDonalds, Disney, and Nike. The common thread among these corporations is that they all have a unique trademark that immediately sets off a trigger in the consumer’s mind.

Even small children can easily identify the golden arches of McDonalds. This ability to link a trademark to a particular business is why trademarking can be crucial to the success of any brand. After putting forth a tremendous amount of time and effort into building a distinguishable brand, trademarking is the way in which you can protect your investment of time and effort.

Prerequisite to Registration – Use or Intent to Use in Commerce

In order to register a trademark, you must have either been using your trademark in commerce or have an intent to use it in commerce. Commerce can be interstate, territorial, and between the United States and a foreign country. If you have already used your mark in commerce, you may file under the “use in commerce” basis.   If you have not yet used your mark, but intend to use it in the future, you must file under the “intent to use” basis.   This means you have a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating sample products, or performing other initial business activities).[1]

Importance of Establishing Priority

In the world of trademarks, priority is key. A common issue in establishing trademarks is that two businesses have very similar marks in terms of look, size, shape, or wording. If both businesses apply to the United States Patent and Trademark Office (USPTO), the first in time to file will usually receive approval, leaving the latter with no option but to begin developing a new one.

Once your business has used a trademark in commerce or has an intent to use the trademark in commerce, you should immediately consult us about registering it. Even if you feel that your trademark will not be replicated, it is always best to register it as soon as possible. Otherwise, you risk losing the ability to do so.

Importance of Avoiding a Likelihood of Confusion

The most common reason that a trademark is denied registration by the USPTO is because it will create a likelihood of confusion in the consumer’s minds. This means that the trademark is so similar to another currently registered mark that the consumer is unable to distinguish the two. In order to avoid a likelihood of confusion, we counsel our clients to establish a trademark that is unique in terms of look, size, shape, or meaning. One way to know if your trademark is sufficiently unique is by conducting a trademark search. If your trademark search results in a large number of similar marks, then you should consider trying to distinguish it.

Tips to Successfully Register a Trademark

  • Register your trademark as soon as you have used the mark in commerce or have an intent to use the trademark in commerce – This will avoid priority issues.
  • Conduct a thorough search before applying to register your trademark – Our firm will conduct an extensive research report before filing.
  • Try to create a trademark that is as unique as possible – This will avoid a USPTO finding that there is a likelihood of confusion and denying registration.

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