How to Protect Your Trademark

By Josh Gerben

Trademark symbols are everywhere, from website terms-of-service contracts to breakfast cereal boxes. But while trademarks may be ubiquitous, they’re often a source of confusion for many small business owners.

How important is it to have a trademark? How much should the process cost? And once you have a trademark, how do you go about protecting it? The answers to the first two questions vary depending on the situation, but the answer to how to protect your trademark remains constant: you must be prepared and vigilant.

The following tips will help you gain a better understanding of what it takes to defend your trademark from infringement.

Select a Strong Trademark

The first step in protecting your trademark comes very early in the process — when you’re determining the trademark itself. Consider the following tips as you are in the process of determining the name or phrase you want to trademark:

  • Made-up words (e.g. Kodak, Viagra) are excellent trademark candidates because they are completely unique and don’t have any other common meaning.
  • Common English words that are not directly related to the product (e.g. Apple computers, Jaguar automobiles) can also anticipate relatively broad trademark protection.
  • Descriptive trademark applications (e.g. “Sweet Lollipop Store”) or trademark applications that include a laudatory word like “super” or “top” will have limited trademark protection at best.

Be aware that the more your trademark actually describes the product/service you offer, the more difficult time you may have defending your trademark. But at the end of the day, only you can decide whether you want to have a trademark that’s extremely unique versus one that is more descriptive. The most important thing is to make that decision with the full awareness of how widely or narrowly your trademark ownership will be able to be enforced.

Registering Your Marks

Trademark registration can be done through the United States Patent and Trademark Office (USPTO), and it is a fairly cost-effective way of putting some legal weight behind your brand elements. But be aware that registering a trademark doesn’t happen overnight — in fact, you’re looking at a minimum of eight months. That’s why it’s so important to start the registration process sooner rather than later, so that you ensure you have the resources you need to enforce your trademark as necessary.

Once your trademark is registered, you’ll enjoy numerous benefits including:

  • A registered trademark gives you the ability to enforce your trademark ownership in federal court, should that ever become necessary.
  • A more practical reason to register a trademark is that it’s a great deterrent to others who may be considering naming their product/service the same thing. The fact that your registered brand shows up in a trademark search result is enough to dissuade most people from pursuing the name further — they’d rather consider other options than get involved in potential legal hassles.
  • If another company is using your trademark as its Facebook user name, Google ID, etc., a federally registered trademark showing you as the owner may help convince the site to take down the infringing content, giving you the username or ID in question.

Employ a Watch Service

Keeping up with your trademark renewals is the first step in maintaining a valid trademark registration, but just as important is monitoring your trademark for potential cases of infringement. If you don’t pursue infringement vigorously, your lackadaisical approach to defense can actually be used against you in court. That’s right. If you don’t defend your trademarks, a judge could say that you failed to police your trademark and you could lose your rights to it.

No business owner has the time to watch every corner of the world for trademark violations, so watch services offered by a trademark law firm can assist you in keeping your trademark valid and enforceable.  If you’re serious about protecting your trademark, engage a trademark attorney to conduct a trademark monitoring service for your trademark.

Bring in a Lawyer

Trademark disputes can seemingly come out of nowhere, and you never know if or when you will need to defend your trademark against infringement, or be accused of infringement by another company. By retaining a good trademark lawyer from the start, you can avoid some of the costly mistakes commonly made by small businesses.

Trademark infringement doesn’t need to cause quantifiable harm, it simply has to increase the likelihood of it — just ask the Victor Moseley, who was barred from naming his small lingerie shop “Victor’s Secret.” In today’s legal environment, you need to know that your back is covered.

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Josh Gerben
Josh Gerben is the principal of the Gerben Law Firm, PLLC, a firm that focuses specifically on trademark law and services. Gerben Law works with individuals and businesses looking to protect their assets through search, application and registration processes.

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