Utah Valley entrepreneurs often want to know how to protect their newly minted brand. When they call me, this is my advice.
If you want to protect your brand, you need to know if someone else has already used or registered it. If you don’t, you may end up in an expensive trademark infringement lawsuit. So, the initial step in the process is to do a comprehensive trademark search to ensure a company can register the marks they want to use. Our search includes the U.S. Patent and Trademark Office database, the business name and trademark registries in all 50 states, Internet domain names, a directory of millions of U.S. business names, and trademark registries in countries the business identifies where they want to do business. Then, we provide a detailed letter summarizing the results of our search. There are multiple options if we identify a conflict, including negotiating a concurrent use agreement or choosing a different brand. If there is no conflict, you can take the next steps to apply for U.S. registration of your mark.
What are the next steps?
- Use the mark (or plan to use it) “in commerce,” meaning in connection with the sale of goods or services in more than one state.
- Provide the dates the mark was first used and first used “in commerce.”
- Identify the International Class (or classes) under which to file the mark.
- Prepare a description of the goods or services offered in connection with the mark.
- Decide whether to apply for a words-only or a words-and-design (logo) mark, or both.
- Provide a copy of any logo and a specimen to show the word mark or logo in use (for example, on a label or packaging, or a website screenshot for an Internet-based business); and
- Pay a filing fee.
So, before you decide to take a “do-it-yourself” approach to protect your brand — and risk an expensive lawsuit —do what numerous entrepreneurs before you have done and consider having a trademark professional conduct a comprehensive search and then help you prepare and file your application.
Key Benefits of Federal Trademark Registration
- Exclusive right to use the mark nationwide and to use the ® symbol
- Right to file an action in federal court, stop others’ use, and recover profits, damages, and costs, and possibly triple damages and attorney fees
- Basis to obtain registration in foreign countries.
Fillmore Spencer partner Barney Madsen has been a trademark attorney since 1998. He has helped dozens of Utah Valley’s leading companies develop and protect their corporate brands through federal trademark registration.
If you still have questions about protecting your brand, contact Barney for a free constultation.
