Protecting Your Brand
What is the difference between a trademark ™ and a registered trademark ®? Both symbols allow you to claim the rights to your trademark and indicate to the public that you are using it as a trademark. Each symbol has its pros and cons.
A ™ next to your mark signifies a claim of ownership of a trademark that is not registered with the federal system. One can use this notice as soon as the trademark is put into action.
Pros: The ™ trademark symbol is the fast and free way to control the use of your intellectual property. It is recognized by the United States judicial system as common law, which allows the owner to legally pursue the unauthorized infringement or use of this trademark to a certain extent.
Cons: The legal ramifications are usually limited to only protecting the trademark within the geographical area(s) where the mark is being used, or where the mark is reasonably expected to be recognized. For example, if you use a trademark in Colorado and have registered your trade name with the Colorado Secretary of State’s Office, you may be protected within the State of Colorado and perhaps in closely surrounding areas.
The ® signifies that you have registered the mark with the US Patent and Trademark Office (USPTO), and legally cannot be used until you have received the certificate of registration from the USPTO.
Pros: The ® trademark symbol provides a more substantial legal claim to ownership with exclusive rights of use. Registering your mark (in most cases) allows you to prevent unauthorized use of your brand in an exact or similar vertical through legal proceedings for trademark infringement. In specific instances, you can also prevent the use of your trademark in completely dissimilar products/services, depending on whether or not a consumer could be confused as to the identity of the goods and/or services. For example, Microsoft Bakery would not pose as an infringement to Microsoft Software, but Microsoft Televisions just might. For another example, you could not simply open a restaurant and call it McDonald’s as customers have come to associate that name with a rather large chain of hamburger joints.
Cons: Registering a trademark at the federal level can be a lengthy process, and not to mention expensive. You also need to make sure you have something to protect that would not be considered generic. A trademark can only be registered if it meets the requirements set forth by the USPTO and has distinctive characteristics.
So how do you know which course of action works best for you?
Let’s say you are a local business, with only a few clients in other parts of this country. While you offer something unique for your clients, you are not the only business of your kind. First, register your trade name with the Colorado Secretary of State. Second, review your mark by doing your own research. Look at the search engine on the USPTO’s website, go to various search engines on the internet and enter your proposed mark. If you find potential problems, you might want to entertain the idea of a new name or to talk to a lawyer. Otherwise, you might spend time and money building your business, only to receive a nasty cease and desist letter from another company using the same name.
Let’s pretend that your company name has geographical references, like Denver Widgets, and your branded icons follow suit. Rather than worry about changing everything to meet registration requirements, keep your trademark focused on your brand. TM your trademarks.
Protect what sets you apart. Let’s say your company, like many others, has multiple trademarks. We recommend that you consider registering the most valuable or the few that are most unique. Use careful consideration to determine what is most proprietary and specific to your business, and the most likely to be ripped off. A special or unique graphic will need the most protection around it. Many times you’ll find that while your name, logo, and slogan are unique to your business, they may not be the most worthy of protecting. For example: Let’s say you manufacture genetically altered potatoes that cause one to lose weight. Not only is this a patent-worthy discovery, but your packaging should be a registered trademark. Trademark the design that will set you apart when other companies start trying to pass off similar products.
Register your trademarks for an international business. If your business is international, it is better to be safe than sorry. Many other countries have the philosophy of giving ownership to the “first to file” as opposed to the “first to use”. Countries like China or the European Union do not recognize trademarking through use, and you could find yourself at a loss in a trademark dispute. Not only in pursuing legal damages for infringement, but in losing the capacity to use your own trademark. It will be worth every penny to avoiding the legal process pains of an infringement.
Remember to maintain the rights of ownership of your trademark. Registered or not, continuous use in commerce, as well as continued policing or enforcing your rights is required to claim ownership in the event of infringement. There is no hard and fast rule, but you normally have about 5 years of inactivity before you no longer retain ownership of that trademark.
Tip: Microsoft Word on a PC allows users to type just T for ™ or R for ® while holding down the Ctl and Alt keys. On a Mac, users can hold down the Option key and type 2 for ™ and r for ®.
(Thank you to the law firm of Replin & Rhoades LLC, specialists in Intellectual Property Law – Copyrights and Trademarks for reviewing this article for accuracy.)
Brand well and prosper!
Andy Cleary