In our last post, Why you need to register your trademark. Today., we discussed why companies need a trademark. Today, we talk about some of the basic considerations for companies looking to register a new mark.
Though a trademark, in one sense, functions like a name, it is much more than that. Trademark law imposes limitations and requirements that you need to be aware of. Once you have decided what you will protect (such as a name and a logo), there are a few things you will need to think about:
1. Where do you want to register? Trademark rights are usually registered nationally. In the United States, you can register at state or federal level, though the protections offered and the processes for applications are different. (For nationwide protection in the United States, you need to register a federal trademark with the USPTO). While you can choose to register in multiple countries, doing so will incur additional costs. Obviously the most important place to register in is your main market and your home base, but if you have the resources, you may also want to get a registration in planned future markets.
2. What classes do you want to register in? Generally, trademark protection is only provided for the specific, international class of goods or services for which you register. If you take out a trademark in class 8 for hand tools and the like, for example, another company can still register an identical mark in class 18, which protects leather goods and handbags. You need to think about your business, and where you may be growing in the near future and then decide which classes you want protection in.
3. Has your mark been taken? Once you are ready to register your mark, you still need to do a search to see if anyone else has registered your mark or a similar mark in the same class. If there are no conflicting marks, great. If you find that there is another mark that is identical or confusingly similar to the one you want to register, however, you will need a plan B. One option is to change your mark to avoid the mark already registered. You may also choose to buy the conflicting registration from the trademark holder. If you feel there is due cause, you may even try to cancel the holder’s mark, but that can be a costly option that many early-stage companies might wish to avoid. Doing a trademark search before you put time and money into developing your name and logo is one way to avoid issues with conflicting trademarks.
These are of course just the starting questions. Though entrepreneurs rightfully take pride in being able to wear many hats at once, registering a trademark can be a complicated process. The advice of a qualified professional will help ensure you get the right trademark protection for your business.
