How To Protect Your Trademark: 4 critical steps

For many startups, creating a brand is one of the first items on the agenda. It is therefore understandable that founders are interested in protecting their hard work in order to avoid unexpected costs and pitfalls in the future. Registering a trademark is an important step in achieving such protection.

Therefore, we always advise our tech startups clients to register their trademarks as soon as possible.

The U.S. Patent and Trademark Office (USPTO) defines a trademark as “any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.”[1]

A trademark prevents others from registering the same (or a confusingly similar) trademark for the same type of business or that which falls within the same channel of trade, and provides legal protection in the event that another business uses your trademark in a prohibited manner.

Here are the most critical steps in the trademark registration process:

1st step – Understand what do you want to register

A trademark can be used to protect the name of a brand (“Word Mark”), the brand’s slogan or a brand’s visual element, such as a design, logo or symbol.

You can register words together with a design or logo as the total mark in one application, however, the manner in which a trademark is registered is the way such mark must be used. In other words, the words and identical design cannot be used separately or changed to retain the protection of your trademark. Therefore, if you have any intention of changing the design or logo which accompanies the “words” in the mark, it makes good sense to register the “words” alone and if you feel your design or logo is unique then a separate second trademark application may be warranted.

2nd step – Conduct a trademark search

Conducting a trademark search for pending and registered trademarks is an important step in the process because you need to determine whether another party is using a trademark that is identical or similar to the mark that you intend to use. It could be quite costly to rely on a selected trademark and print brochures, run advertising and develop a website only to discover that you are infringing upon another’s trademark and be forced to cease using the mark you chose.

 3rd step- Identify the class that is relevant to the goods or services with which that you will be using your trademark

Broadly speaking, there are 45 different classes to choose from.  The trademark classification system is divided between goods, in classes 1 – 34 and services, in classes 35 – 45. You can use the USPTO search system to identify your class, however, for a tech startup that doesn’t have a legal background this can be a very confusing process. Here are some popular classes for startup companies:

Social media: Class 35 (sale and marketing of goods and services), Class 38 (telecommunications), Class 41 (education and entertainment services classified by their content) Class 42 (computer service). Mobile Apps: Class 09 (computers, software, electronic instruments, & scientific appliances).

The class selection can be very tricky; for example, while downloadable software is in Class 09,  non-downloadable software is a service in Class 42.

This step can be critical because by choosing the wrong class, you lose the legal protection in that class. For that reason, we always try to not only identify the best class(es) for your company, but also to anticipate the class or classes in which the startup will operate in the future in order to provide full legal protection.

 4th step- Identify the basis of the registration

If you have already used your mark in commerce, you may file under the “use in commerce” basis. Your trademark may considered “use in commerce” when there is actual use or your mark is visible to the public, for example – when you sell your mobile app on the Apple Store, have a “coming soon” landing page with information about your product/service, or even if you have beta users.

Use is established by providing the date the mark is first used anywhere and in commerce, as well as submitting a specimen (example) showing how you use the mark in commerce (i.e. website and mobile app screenshot , brochures, etc.,).

While we advise our clients to start using their trademarks as soon as possible, sometimes it takes time and the trademark is not yet market ready. In this situations we advise our clients to register its trademark under the “ 1(b) intent to use” basis. This means you have a bona fide intent to use the mark in the future. This filing basis requires filing an additional “Statement of Use” form and paying a fee.

After you file your trademark application:

A USPTO examiner will be assigned to review your application, and the timeline of the process will depend on the complexity of the mark and the legal issues.

Trademarks are required to be renewed at varying intervals, between the 5-6 years of registration, 9-10 years from registration date, and every 10 years thereafter. Failure to renew your trademark will result in cancellation of your registration.

If you discover that someone is infringing on your trademark, you should contact an attorney as soon as possible. Your attorney will send a cease and desist letter on your behalf, urging the other user to stop using your mark. If the letter does not achieve the desired result, you can file a lawsuit seeking a court order prohibiting the continued infringement of your trademark, monetary damages, or both.

[1] http://www.uspto.gov/trademarks/basics/index.jsp

Have more questions? Need more legal assistance?  We would love to help you with your trademark registration! Just shoot as a note here. Enjoyed reading this post? Please share!

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