chapter 2

Trademark Registration

Trademark

Definition

A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider, and to indicate the source of the goods or services.

—U.S. Patent & Trademark Office

In the competitive and constantly changing digital marketplace, a trademark is a very valuable asset. It differentiates your business and the quality of your products from those of your competitors. Your trademark carries your reputation with it, and reinforces long-term relationships with your buyers. It’s important to be aware of trademarks not only to protect your rights but also to ensure that you’re not infringing on the rights of others when creating one.

The United States Patent and Trademark Office (USPTO) is responsible for registering and enforcing your rights as a mark holder. They're a resource you can access to gather information, ask questions, check the registry of current marks and begin the registration process.

In the United States, you have the option to register your trademark at either the state or federal level. A state registered trademark only protects your mark from infringement within that state. A federally registered trademark provides protection across the entire country, but is only available if you do business with other states or internationally. If your ecommerce platform provider can show transactions that span beyond state borders, you can gain the beneficial protection of a federally registered mark.

State-registered

(i) Protects your mark
within state lines.

(ii) Available when you only do businesses within your state.

(iii) Does not offer protection in other states.

(iv) Does not help register
in other states.

 

Federally-registered

(i) Protects your mark
throughout the U.S.

(ii) Available when you do business with different states or internationally.

(iii) Provides a presumption of the mark's ownership.

There’s no legal requirement for you to register your trademark, but there are benefits for your brand if you do. Registering your mark gives you the exclusive right to use it in either your state or the whole of the U.S. In the event that someone does use your mark, it’s easier for you to take legal action.

When you register your trademark, it’s presumed to be your property. Having to prove use and ownership of an unregistered mark, however, can be difficult and expensive. A trademark is an asset to your business that’s worth protecting, and registering your mark is the best way to do that.

Registered

(i) Place the ® symbol
near your mark

(ii) Provides the presumption of the mark’s ownership, which makes litigation easier

(iii) Mark is property that can be sold or licensed

 

Unregistered

(i) Place the ™ symbol
after your mark

(ii) Must show use on website, emails, invoices and packing slips

(iii) In a dispute, the first party to have used the mark will be successful

When deciding whether or not to trademark your brand, the first thing to consider is whether your mark will be approved. The USPTO does not allow the registration of marks that are generic, descriptive or likely to cause confusion with existing trademarks. Your mark can’t be a word or phrase used commonly in the industry or similar to another company’s mark. Trademarks are an important part of your brand, and insuring they are compliant is the first step to creating an indefinable and effective mark.

Registration

Five Steps

(i) Ensure your mark can be trademarked
(ii) Check the registry
(iii) Identify your unregistered mark
(iv) Seek legal advise
(v) Register the mark

Check the registry of existing marks to see if yours is unique. When this process is underway, begin identifying your unregistered mark. This means placing the TM symbol near your mark on your ecommerce store. Completing this step is the beginning of getting some degree of protection.

The final step is to go through the actual trademark registration process. This includes completing forms, providing drawings of your mark and listing its wares and services. Be patient – this stage can take up to six months to complete. Registering your mark isn’t overly complicated, but you should still seek legal council if possible.

Although trademarks are an established area of the legal system, the law is fluid and you should remain informed about changes relevant to you and your business.

The USPTO is a good resource for keeping up to date and ensuring that your rights are maintained. Trademarks are valuable assets, but it’s up to you to capitalize on and protect this aspect of your brand.

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