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Large or small, startup or established, your company’s trademarks are likely its most valuable assets. As such, I recommend securing your company’s branding early on, which can result in some of the greatest returns via word of mouth, good will, merchandising, etc. It can also prevent some of the most expensive consequences your company may be forced to make, such as a complete rebrand. Fortunately, securing trademarks are one of the least expensive legal endeavors your company can undertake – and for a priceless result.

When it comes to branding your company, there is no one-size-fits-all model. Branding elements come in many shapes and sizes such as company name, company logo, product lines and products within those lines.

Simply filing a trademark for a company name is not enough, and in fact, not always the best initial move to securing a brand. Brand is all about the consumer. Often times a company’s name is not the name or brand that the consumer associates with its products or services.

Before applying for any trademarks, I recommend you develop a filing strategy that always for front line protection early on while also allowing for more robust brand security as your company grows.

Identifying the Marks

The first step to developing a trademark or brand protection strategy is identifying the different trademarks your company could secure. However, keep in mind the marks that each company should secure varies from company to. However, most startup and small business brands may be broken down into a few key areas:

  • Company name
  • Company logo
  • Company social media icon(s)
  • Product name
  • Product type

Ranking the Marks

AE-Infographic-2As a second step to establishing a trademark strategy, I recommend prioritizing the trademarks according to those that have the most value, and as such, are at the most risk for your company. In doing so, you secure the most important and valuable rights while deferring costs associated with the less important rights. It is easy to get carried away with applications and brand protection and this step helps mitigate trademark enthusiasm.

Most often, the first trademark priority is your product name (not product type). Product names are used on product packaging and are naturally what consumers’ looks for first. However, it’s important to consider the differences between product name and product type. Each product needs both, and confusing them or combining them, is the easiest way to restrict your trademark rights.

In basic terms, the product name is the brand identifier and the product type is what the product is. This is a common issue for patented products that have only one manufacture or seller during the term of the patent. For example, Trampoline is the original brand name for a “rebound tumbler” (what we call a Trampoline today) when it was released by Griswold-Nissen Trampoline & Tumbling Company.  However, after Griswold-Nissen Trampoline & Tumbling Company’s patent expired the term Trampoline had become the generic product type and Griswold-Nissen Trampoline & Tumbling Company lost both the patent protecting and trademark rights at nearly the same time. Thus, the plan is to assign both a product name and a product type (if one doesn’t already exist) and to trademark the product name but not the product type.

The second trademark priority is often the company name or the company logo. (Personally, I consider the company name as THE second priority.) Simply stated, company name and logo trademarks may be broken down into two major categories: word marks and stylized designs. The risk of two companies independently selecting the same word marks to use as a trademark are more likely than two companies independently selecting the same logo or stylized design. The key word here is independently. If someone copies a logo then there is a copyright violation, which is why I suggest pursuing the company name or word mark before the company logo.

Next on the trademark priority list are social media icon(s). More and more people search and identify products based on social media icons than the full company or product logo, which is why it’s next on my list.

To summarize, this is my recommendation for trademark priorities:

  1. Product name
  2. Company name
  3. Company social media icon(s)
  4. Company logo

Notice that product type didn’t make the list. The type is what you give away to protect the product name mark against becoming generic.

What are Goods?

The third step in preparing a trademark is determining what the goods and/or services are or crafting a description of goods and services. The basic idea is that you may reserve the right to a trademark for any goods you sell over state boarders or in interstate commerce.  The trick is to balance the breadth of the description of the goods and services for broad coverage, however limited enough that the trademark actually covers what you sell.  For example, if your company manufactured and smart phones you may want to craft a description of goods that includes mobile electronic devices but not a description of goods that covers televisions.   It’s important to keep in mind that the trademark office does require proof in the form of a specimen—such as a recite, screen capture, photo of packaging, etc.—that shows you are using the trademark on the goods identified in the description of goods or on the packaging related to the goods. Often this is easy to come by but depending on how the description is crafted the specimen can be more difficult to obtain.

While working on a description of goods, it’s important to keep in mind that a different description is necessary for each class of goods selected. For example, medical equipment may fall into one class and textile goods may fall into a second. If you sell both than you would need to file a trademark in two classes.  Note that there is an additional government fee for each class of goods, and a separate specimen is required for each class. The government has divided the world of commerce into 45 international classes ranging from broad categories, such as electronic devices or medical services, to narrower groupings, such as industrial oils and gases or hand tools. Depending on your business model and product line you may fall into multiple classes. More classes means broader protection but also additional fees.

Interstate Commerce and First Use

As you go through the trademark process keep detailed records about your first sale or provided services. Make sure to note the first sale or provided services outside your state of incorporation or residence, as trademark registration is about sales between individuals or entities in two or more states.  If you’re a local business that never sells outside your state boarder than there are other avenues for protection but a federal trademark registration isn’t one of them.

I find that the most common mistake associated with trademark is applying for a federal registration based sales at local events, fair, or market. In this situation, even if you obtain a registration based on the local sales, the trademark is susceptible to a cancelation proceeding in which you will need to provide proof of first use or sales outside your state of residence or potentially lose your trademark. So secure your rights but do so on a basis that you don’t open yourself up for the potential for losing them later on.

Prior to Contacting an Attorney

Before ever contacting an attorney about a trademark, I recommend that you, the business owner or entrepreneur, do the following:

  1. Research the competition and its brands. You can do this using the UPSTO trademark search form. If this is too complicated (as the government trademark search is not always easy to use), just Google the competition.
  2. Obtain your domain name. I cannot tell you the number of clients that have completed the trademark process, then request that I obtain the trademark from another owner. Trademarks and domain names are too separate areas that are unrelated. To remove someone from a domain name, the owner pretty needs to be a cyber squatter acting in bad faith. This means they don’t have a current website and they emailed you about buying the domain. This is hardly ever true. More importantly, obtaining a domain name is typically harder than obtaining a trademark. My advice: obtain one you can live before you invest in brand protection.
  3. Form your entity. Prior to doing anything else it’s a good idea to form an entity to own the property. Transferring a trademark isn’t hard or expensive but having an entity in place is an important first investment to protect your personal wealth.