Trademark FAQ: Protect Your Intellectual Property

Trademark FAQ Protect Your Intellectual Property by Aaron Pierce

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A registered trademark is an essential part of any successful startup.

For any entrepreneur starting an enterprise, trademarking the words and design elements under which they are doing business is an important part of protecting that company and its intellectual property while securing its brand.

If you think about ubiquitous companies like Ford, Coca-Cola, Pepsi, Nike or Adidas, the first thing that comes to mind is what should: the trademark.

A trademark is a mark by which a company is known and under which they exist in the stream of commerce. The word(s) and design elements of a logo need to be protected, and what is true for major brand names is also true for any startup.

The United States Patent and Trademark Office (USPTO) has managed to streamline the process to a degree, with an electronic platform that increases the communicative capabilities between the applicant’s counsel and the USPTO. But, as opposed to a copyright registration, a trademark application is assessed by attorneys at the USPTO. For that reason, a trademark application should be completed by an attorney who is experienced in the finer legal points of intellectual property law.

In the event of pushback from the USPTO, the attorney can:

  • respond in kind;
  • argue on the company’s behalf; or
  • make any required edits as necessary.

Even if the trademark application isn’t approved as initially filed, it may still be successfully registered as a slight variation of the initial application.

If I trademark my company or product name, does that mean no one else can use it?

A trademark is only protected for the category in which the product resides. The word and even the design itself can be used for other items that are not associated. For example, if a trademarked word or design is protected for only a clothing category, another company would be likely able to use that same word or design to protect electronics, lamps, or anything else that could be classified in a wholly different category.  

I registered my business with my state. Isn’t that sufficient?

The main purpose of a trademark is to prevent confusion in the marketplace. A business owner wants to ensure that the consumer is aware of what’s behind their branded product or service. When a company is incorporated or a “doing business as” (DBA) is filed with the state, that business name is registered with that state only, not the other 49 states.

A trademark is a federal protection. Even though a trademark is category-specific, it applies to all 50 states; the business is protected against a much greater demographic.

When should I apply for a trademark?

“I have my company name and a cool logo a friend designed for me. Should I trademark now?”

As far as timing, a business owner doesn’t really need to spend the money, time, and energy to trademark until there is an intent to use the trademark in the market. In practice, that means applying for a trademark as soon as possible since people do not generally invent businesses only to let them collect dust.

The trademark registration process can take anywhere from seven months to several years, depending on its complexity, conflicts with other marks in the market, or pushback from the USPTO for any number of reasons.

How does a trademark protect my idea?

Once the trademark paperwork is filed, the USPTO will provide a receipt with a filing date. If the trademark is eventually approved, it will be approved retroactively to the date of filing. Any other trademark applications with a similar mark, filed after that date, would not be approved.

A trademarked company name and logo can also provide domain name protection. Under the anti-cybersquatting consumer protection law, a trademark owner can sue for damages and recover a domain name when someone is squatting on a domain that’s identical or similar to a trademark.

In the event of a copycat or an outright theft, acquiring a path for legal recourse is the biggest advantage of registering a trademark. If you need assistance in understanding the process or completing it, be sure to contact Pierce & Kwok LLP.

Aaron Pierce
(212) 882-1752
253 Church St. Suite 4A
New York, NY 10013
ahpierce@aaronpiercelaw.com
www.aaronpiercelaw.com