by Josh Gerben, principal of Gerben Law Firm, PLLC
“Branding.” You can’t turn around today without hearing another marketing expert talk about the importance and power of a brand. Building a strong brand is key to building a strong and successful business — but many entrepreneurs, in the excitement and chaos of the startup process, ignore a very important element of building a brand: registering a brand trademark.
The trademark registration process isn’t rocket science, but it’s not as straightforward as it may seem, either. Let’s explore a few of the mistakes that young entrepreneurs most often make when it comes to the trademark process, and discuss how you can avoid them:
1. Misunderstand Names and Logos.
So you’ve got a great name and a snazzy logo to go with it — is it better to file your trademark as a full logo, or should you trademark just the name itself? That depends. If your name is unique enough to achieve registration on its own (e.g. Exxon, Xerox, Coca-Cola) then you’ll get the broadest protection by trademarking your name first, then returning to trademark your entire logo.
If you’re like many companies using a more common name (e.g. Master Plumbers, Tech Experts), filing your trademark as your name and logo combined is more likely to be approved. However, when you file a name/logo together, it is required that you continue to use that exact combination to maintain your federal trademark registration. So if you register a Master Plumbers trademark that uses a Comic Sans font in royal blue — and then in 10 years you want to change to a different font in a different color — you’ll have to file a new trademark on your updated logo.
2. Name Generically.
One of the most important aspects of successful trademark protection is having a trademark that stands out as unique in your industry. If your business sells carpet, you’d have a difficult time obtaining registration for “Tough Carpet” because it is too descriptive of the goods it represents. But if you want to name your new burger joint “Tough Carpet,” you’ll have a greater likelihood of being approved. Just think about Apple computers: An orchard owner may not be able to trademark the word “apple,” but Steve Jobs was able to make it happen.
3. Rely on DIY Trademark Searches.
Certainly you can perform a trademark search on your own, whether through a for-profit “search for trademarks” website or even through the USPTO’s online portal. But unless you’re willing to risk your entire brand on that search, it makes sense to partner with someone who knows what they’re doing. A trademark attorney understands the ins and outs of trademark law and can help you avoid the common pitfalls that can occur when navigating the trademark search and application process.
For example: Want to name your tire store Tires Etcetera? If you search for “tires etcetera” on the USPTO site, no search results would appear, giving you the impression that the name is up for grabs. But it isn’t — and if you started using that name, you’d be infringing on the trademark of retail tire store Tires, Etc.
Trademark attorneys have intimate knowledge of the trademark process, along with access to specialized trademark search software, both of which ensure that the trademark you want to use is truly clear and available. Hiring a trademark attorney is a smart investment in your brand and your business’s future.
Avoid Trademark Pitfalls and Build a Solid Brand.
Starting a business is an exciting time, and coming up with product names and company logos can be one of the more enjoyable tasks you’ll tackle. By following a few tips when it comes to registering your brand’s trademarks — understanding how trademark protection works for names versus logos, being aware of how generic words can impact your trademark application and hiring a competent trademark attorney to perform a comprehensive search — you’ll be well on your way toward registering a trademark that can be protected and building a solid brand.
Josh Gerben is the principal of the Gerben Law Firm, PLLC, a firm that focuses on trademark law and services. If you are looking to police your trademark, check out the many resources available on gerbenlaw.com.
