While companies dedicate a lot of effort and resources into developing quality products, name, brand and reputation are what grab consumers. Most consumers don’t know or understand the quality control procedures in place in Adidas factories, but they trust the Adidas name to deliver a good pair of sports shoes.
Companies protect their names and brands with trademarks. Generally speaking, a trademark is any word, name, symbol, design, or a combination of these things, used to identify and distinguish goods or services. Trademarks can apply to not just the company name, but also products as well. For example, “Apple” is a trademark that protects the company’s name, while the “iPhone” trademark protects the specific product.
How can I protect my trademarks?
Trademarks are usually offered some protection through usage alone – sometimes referred to as ‘common law rights.’ Simply speaking, if you were the first to use the mark, you will be afforded some protection by that fact alone. Alternatively, you can more securely protect your trademark by registering it with a country’s trademark office. Once you successfully register your mark, your competitors will be prevented from using that mark in the areas and classes to which it applies.
To register or not to register
The obvious appeal of relying on use of your trademark instead of registration is that it requires no action and no funds (at least at first), but those tempted to take that option should consider the risks involved.
One issue is that the protection offered by first usage may be limited and in many cases will not cover you outside your immediate base of business operations. Another risk is that if someone else registers a name that is identical or similar, this might impede your use of your own mark and limit the scope of developing it. This can have devastating consequences for your business down the road.
These types of issues are well illustrated by the story of the original Burger King restaurant. The second entity to use that trademark registered the name with the USPTO and has franchises throughout the US and beyond. The original restaurant bearing the name is still unable to expand beyond a 20-mile boundary of its single restaurant in Mattoon Illinois – and this even after registering a state trademark.
For companies weighing up their options, the costs of trademark registration need to be balanced with the fact that registration, in the right classes and jurisdictions, usually affords much better protection for your name and brand, including broader coverage and exclusive rights to use the mark. For example, in the US a trademark registration with the USPTO will protect your trademark in all 50 states. Registration with many national patent offices, such as the CIPO in Canada, or JPO in Japan, provides exclusive rights to use the trademark throughout those countries.
Finally, those with an eye for funding or acquisition should note that having a registered trademark is often required by potential investors or buyers as part of their basic due diligence process.
In an upcoming post, we will look at other considerations and steps for registering your trademark.