Serving the Community Since 1936

Leave Your Mark

January 28, 2020

by M. Steven Osborne, Esq.

 

One often overlooked aspect for small and mid-size business owners is intellectual property. Often, entrepreneurs consider the tangible property their business owns as assets without considering intangibles such as customer goodwill, trade secrets, copyrights to creative content, and trademarks. If you own a business, whether you realize it or not, your brand is everything. It is the way in which customers identify you and it is what truly separates you from others who are competing in the same field you are. This is why trademarks are so important.

A trademark is a symbol, word/words, name, or device that represents a company or product and helps to identify and distinguish that company or product from others. A trademark may be established by registration or by use. You may have noticed that sometimes a phrase or words will have a small “TM” beside it. This denotes that the owner is claiming a trademark. The “TM” is meant to put the world on notice that the phrase or words have been trademarked. One does not even need to register the phrase or words in order to use this designation, it is simply claimed and then attached to an unregistered trademark. You may also have noticed that some phrases or words have a “®” symbol beside it. This symbol can only be used when the trademark has been registered.

What are the benefits of registration? There are several. First you put a larger number of competitors who may be looking to use the same or a similar mark on notice. Second, it allows your mark to be treated as a trademark nationwide. One problem with simply establishing a trademark by use is that the protection for that trademark may be limited in geographic scope. Registering your trademark will give it a nationwide reach. Third, pursuant to federal law, a violation of your registered trademark could entitle you to treble damages and attorney’s fees, thus saving you a lot of money in litigation. Additionally, if you are expanding your business presence overseas, the registration provides a basis for registering your trademark in foreign countries and empowers U.S. Customs and Border Protection to enforce the law against foreign imports that may be infringing on your mark.

Being the owner of a business often involves being prudent with your money, which often means doing things yourself if hiring others is not absolutely necessary. This is especially true for owners of small or mid-size businesses. Accordingly, you may be asking, can’t I simply do the registration process myself? The answer is yes you can. However, the trademark registration process is not as easy as it may appear. The officials registering your trademark will demand a great deal of specificity in terms of what is actually being trademarked. If your filing is vague, then your application will be kicked back to you or denied and you will have to begin the process again. This is where having an attorney assist you with the process can be helpful. Hiring an attorney is an investment on the front end that can save you time and aggravation later in the process. Also, it will be helpful to develop a relationship with counsel so that, in the event your mark is infringed upon after being registered, your attorney will have a grasp of the context of your mark and how best to defend it.

You should be in the driver’s seat when developing your business and your brand. Getting a good handle on trademark law and the value that it brings to your business is essential for the entrepreneur.