Small business owners should begin the trademark process as soon as possible. Start by selecting a unique name. It is important to avoid commonly used words in your industry or phrases that describe the goods and services you are offering.
Next, hire a trademark attorney to manage all the legal decisions that need to be made. Your attorney should then complete a comprehensive trademark search and draft an application to file with the United States Patent and Trademark Office (USPTO). Once your mark is registered, monitor its use and renew the mark by set deadlines.
The Trademark Timeline for Small Businesses
Consider the following trademark timeline for small businesses.
When Should the Process Start?
This is one of the most frequently asked questions we receive. Some small business owners assume they don’t need to register their trademark until it’s been in use for some time. Others want to hold off on the expense until they are turning a larger profit. The truth is, however, that the process to register a trademark should start as soon as possible. In fact, waiting to obtain a trademark registration until products are being sold or profits are being made could turn into a costly mistake.
Unfortunately, we often see small business owners build and grow their businesses without a trademark registration. They invest in product labeling and marketing and begin to establish their brand within their community.
Then, at some point, they receive a cease-and-desist letter from another business with legal right to use the trademark. Now, these small business owners have to invest more time and money rebranding their business, products, and services or risk more serious legal action. This difficult scenario can be avoided by starting the trademark registration process as soon as possible.
Choose a Strong Mark
As an entrepreneur and business owner, you may have decided on your trademark long before you started your small business, but will this mark provide the best protection?
The USPTO will not trademark generic and descriptive names, like Great Pizza or Hair Cuts. Consider stronger marks, those that do not represent your product or service at all, like Apple, or fanciful, inventive terms, like the companies Nike and Pepsi have chosen. These unique marks will likely provide more protection against infringement.
Many small business owners choose to use their surname in their business name. This is understandable as it helps to identify your business within the community. Unfortunately, the USPTO considers these types of business names descriptive, and it can be challenging to secure trademark protection on the Principal Register right away. However, once the trademark has been in use for five or more years, a surname is capable of receiving protection on the Principal Register.
Hire a Trademark Attorney
You may choose to take the do-it-yourself approach in designing a website or decorating your retail space, but registering a trademark is not something you should DIY. That’s because of the countless legal decisions that need to be made throughout the process. From conducting a trademark search to drafting the application and responding to Office Actions, the process to register a mark with the USPTO can become overwhelming to small business owners already busy with the many tasks of starting a business. When you choose to partner with an experienced trademark attorney, you will not only decrease your workload, you could also increase your chance of approval. In fact, the University of North Carolina recently did a study that found applications filed by trademark attorneys increased their likelihood of approval by up to fifty percent!
Conduct a Comprehensive Trademark Search
This critical step of the process should be done before you submit an application to the USPTO. A comprehensive trademark search is used to determine whether the mark you hope to register is already in use. Because most trademark disputes are caused by marks that are confusingly similar, not exact matches, a simple Google search is not enough to alert you to possible trademark matches.
Fortunately, your trademark attorney’s software is likely much more comprehensive. You’ll be alerted to all existing marks that could be too similar to your own, and your attorney will be able to provide guidance on what can be done. Often, only a few small changes need to be made to your mark prior to registration, but occasionally, some small business owners may need to choose a different mark altogether.
Register with the USPTO
Small business owners do have some common law trademark rights simply by using their trademark in the marketplace, but these rights are extremely limited. First, they are more challenging to enforce, and second, they only apply to the small, geographic region where your business is located. Some small business owners may find these limitations adequate, but if you wish for your small business to grow and expand over time, or if you plan to sell your products online throughout the United States, you need to register your trademark with the USPTO.
The date you file your application with the USPTO will become your priority date. This means that anyone looking to file a similar mark after that date will likely be refused. Therefore, even if you feel confident that your mark isn’t currently being used by another business or individual, you should register your trademark with the USPTO. This will ensure your brand is protected against future infringement.
Maintain Your Mark
It is important to note that the USPTO approves trademark registrations, but they do not enforce their use in the marketplace. That responsibility falls on the trademark owner. Once your mark has been registered, you must actively monitor its use. This can be a time-consuming effort, but fortunately, most trademark attorneys will offer monitoring services. If they detect potential infringement, they will make you aware and work with you to determine the best course of legal action moving forward.
A trademark registered with the USPTO does not expire, as long as you continue to use it and meet renewal deadlines. Always be sure to use the mark as it is listed on your trademark registration and keep up with renewal dates. For new trademarks, the first renewal occurs between five and six years after the registration date, and then again between the ninth and tenth year. After that, the trademark will need to be renewed every ten years. Failing to meet these renewal deadlines could mean the cancellation of your trademark.
Small Business Trademark Registration
For small business owners, the to-do lists can seem endless, but don’t let trademark registration fall through the cracks. Whether you are beginning to create a business plan or your doors have been open for a year, start the process to register your trademark as soon as possible. Work with an experienced trademark attorney to choose a strong mark and conduct a trademark search. Then, register with the USPTO to receive a priority date and keep others from registering a similar mark. Once your mark has been registered, monitor its use and renew it on time to maintain legal protections that won’t expire.
Founder of U.S. based Gerben Law Firm, PLLC, Josh Gerben is a trademark attorney whose intellectual property practice has secured over 5,000 trademark registrations for small businesses and clients since 2008. Josh is also a business speaker and consultant, and loves helping other law firm’s start, manage, and grow their firms effectively. Find him on Twitter @joshgerben.