As a new business owner, you are thrown into the world of legalities and registrations. One important registration you should keep in mind as you choose domain names, create logos, and register your business is trademark registration.
A trademark isn’t legally required for any business, but small business owners should register their logo as a trademark within their state or with the USPTO to avoid infringement issues. Any image, sound, color, or phrase that identifies or differentiates a business should also be trademarked.
An unavailable trademark or image may cause some shifting in your business plan, so it’s a good idea to learn what you can about trademarks before you commit to your other registrations.
Why should you trademark a logo?
As a small business owner, your logo is the greatest tool in getting your brand out there. As people repeatedly see your logo, they will begin to remember your brand and your products. Your logo is an invaluable asset. Without a logo, your products are generic and less credible.
If a small business owner trademarks their logo, they will have more rights to their logo. Once you trademark a logo, you have more legal credibility which gives you protection. If your logo is registered, you will hold a claim to your design and you will have the right to take legal action against infringers of your design.
While an untrademarked logo still has rights under common law, your rights are increased by registering your logo. If you go without trademarking your logo, you are at increased risk for infringement on your account and others’. You could potentially be infringing on another mark without knowing and face infringement lawsuits against you. Or you could have a case where someone else infringes on your mark and the identity of your brand is diluted and consumers become confused.
Ensuring that your logo is legally registered as a trademark will protect you from infringement better than the common law protection offered to anyone without a registered trademark. Check out the video below for a more detailed look at why you should trademark your logo.
*If your business offers services rather than goods, you will need to register a service mark. A service mark works the same as a trademark, it just designates that you are selling a trade rather than a product.
What Else Should a Small Business Owner Trademark?
A small business typically doesn’t need to apply for a trademark on anything but their logo, right off the bat, but there are some things you may want to consider trademarking as the business grows. When you are brand new to the world of business and commerce, you will want to ensure that your work is protected.
Any images or phrases you intend to use or do use on products or in marketing should be trademarked, so you don’t have to deal with any infringement cases. For example, the t-shirt company, Life is Good, entered a lawsuit over the potential infringement of a copyrighted stick figure image created years before. Life is Good was accused of stylizing their stick figure, Jake after Penman, a stick figure from a comic by Gary Blehm. (Source)
While Life is Good won the case, issues similar to this can be avoided by taking the proper precautions and making sure your trademark and copyright registrations are up to date and accurate.
What Happens to a Logo That’s Not Trademarked?
A business owner still has rights to their logo even if it isn’t trademarked. The logo or other images that are connected to the business and branding are protected, to an extent, under common law.
In order to have these protections under common law, you need to ensure that you are not infringing upon another trademarked image, whether it be registered or not. If another business or entity is using a registered mark that is similar to your mark, you could be in danger of legal action taken against you for infringement. Usually, you will receive a “cease and desist” letter before a lawsuit is filed, but your company will still take a blow by having to change its branding.
If another business or entity is using a similar image or logo that is not registered, you could still face legal issues surrounding infringement. If the opposing party can prove that their mark was first used before you began using it, they may have an infringement case against you. They have the rights to the image because they used it first.
Benefits of not trademarking your logo
While there are drawbacks to an unregistered logo, there are benefits to waiting to trademark your logo. Often a new business will go through several logo designs in the early stages. Instead of applying for a trademark registration multiple times within the first year of business, you can give your small business time to work out some kinks before solidifying your logo and beginning the process of registering your logo.
If you send in your applications for a trademark registration and change the logo image while you are waiting to hear back, that can get costly for a small business.
If your logo isn’t trademarked, you may still add the TM symbol next to it to warn others that you have common law rights to your logo image. For businesses that offer services, an SM symbol will go next to the logo.
Types of trademarks
Standard Character Mark
While your logo design might have some alterations to undergo before it’s ready to be finalized, often the phrase or business name associated with the logo will stay the same. The name can be trademarked as a standard character mark while you wait to register the logo design. When you register a standard character mark or a “wordmark,” you may use it in any typeface as your own phrase. A wordmark is only a set of words without stylization or design.
When your logo design is finished and finalized, you can apply for a design mark. This will protect your logo as it is. Once you register a design mark, you may use your trademarked image only as it is registered. This is why you should make sure your design is finalized before applying for a trademark.
Check for Similar Trademarks
Before you begin using a trademark or applying for a trademark, you should check for existing registered trademarks that are similar to your mark. Before you go through the trouble of an official search of all of the registered and pending trademarks, you can perform a quick Google search, using keywords. Use terms relating to the images or words you wish to use in your trademark and words that relate to your business or products.
After your quick Google search, you should search again, using TESS (trademark electronic search system) on the USPTO website. Here, you can search for similar images or trademarks using a code. The code consists of three two-digit sets of numbers.
For example, the code: 03.15.01 is the code for eagles. The first set, 03 designates “animals,” 15 narrows that down to “birds and bats,” and the last set, 01 identifies eagles as the subject. Using this code to search will return all the trademarked designs with an eagle image.
If your searches return any similar trademarks, you may still have a chance with your image, but you need to carefully check the following details:
- Image or word similarity
- Type of trademark
- Class of goods or services associated with the trademark
- Famous marks
If your trademark has identical images or words to another trademark that is already registered or one that is pending registration, you could easily be denied registration for your trademark. With that said, the type of trademark is also important to take note of. If you have a similar set of words to another mark, but your stylization or image bears no resemblance to the other mark, you may be able to register your mark.
A caveat you need to look out for is phonetically similar trademarks. Although your phrase may be spelled differently or have a different intended meaning, if the two phrases are phonetically similar, your trademark will likely be rejected on grounds of “likelihood of confusion.”
If you have a trademark you wish to register that is similar to another trademark, be sure to check the class because you may still be able to register your mark. If your business sells toothbrushes and toothpaste, and the mark that is similar to yours is registered by an agricultural company, your mark won’t be denied for “likelihood of confusion.”
This rule also comes with a caveat. If a mark is considered famous, you can still be rejected for using a similar image or phrase on the basis of “dilution of famous marks.” For example, if you design a circle logo with red, white, and blue swooshes of color inside, you could be diluting the famous Pepsi logo, whether or not your company sells soft drinks.
How to Apply for Trademark Registration
You may apply for a trademark through your own state or the USPTO. While the USPTO grants a wider coverage of rights, a state-level registration may be all that is required for a business.
Registering a trademark through your state, generally costs less and is easier to process. Each state has a different set of defined rules for trademark registration applications, but the process is similar across all states. The process through USPTO is also similar. To register for a trademark, you must have the following information:
- Basic business info
- Name associated with the logo design
- Type of trademark you want to register (word mark, design mark, or combined)
- Class of goods/services associated with the trademark
- Filing basis
After you have this information, fill out the application for a trademark registration on your state site or through USPTO
Registered Domain Name vs Trademark
If you have just set up your online store or created a website for your services, you probably purchased a domain name that you can use as your website URL. While this is important, it is not the equivalent of a trademark. You will also need to register for trademarks related to your domain name.
In addition to this, if you purchase a domain name that corresponds to an existing trademark, you could be forced to forfeit the domain on account of infringing a trademarked phrase or word. It’s a good idea to do a quick search of the existing trademarks before you purchase a domain name, so you won’t be forced to change any names or branding later on.
Business Name registration vs Trademark
As you are starting up your business, you may have to register the business itself. Most states require the registration of a small business. If you go through the registration process for your business, your business name won’t automatically be trademarked. You will have to apply for any trademarks you want that are in connection with your brand. Before you register your business, it’s a good idea to check any existing registered trademarks to ensure that your business name and any phrases you want to use in connection with it won’t be accused of infringement.
Patent vs Copyright vs Trademark
According to the USPTO, “A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” A registered trademark may display the ® symbol next to it.
When a business or individual has an invention they want to protect, they need to file for a patent. Unless your small business is inventing new products, you generally won’t have to worry about patents.
A copyright is similar to a trademark, in that it protects your work, but it protects a different kind of work in a different kind of way. A copyright will protect original work, such as paintings, photos, novels, poems, and even characters from stories. A copyrighted image or design is legally allowed to present the © next to it.
Sometimes there is a toss-up about which you may need to use in your circumstances, but we can learn from the example above, the Life is Good character, Jake. The logo, Life is Good, is a registered trademark and they can use it not only as a logo or in marketing strategies, but they also have the right to use it on products as a design choice.
However, their stick figure character, Jake, is a different story. While he is used for branding and marketing, a trademark on Jake would protect one image of Jake. Life is Good could trademark the cheesy grin that Jake has and use it as a logo, but that won’t protect the art on their tees. To protect Jake as a design choice of their tees, they would need to apply for a copyright on their little stick figure.
The copyright will protect more than just the logo-type image of Jake. Life is Good, with a copyright on Jake’s design, would be able to protect images of Jake involved in various activities on various backgrounds on their tees. (Source)