Should you pay to trademark your product or service?

(Editor’s note: Curtis Smolar is a partner at Ropers Majeski Kohn & Bentley. He submitted this column to VentureBeat.)

A reader asks: I started a small business and have come up with a brand that is getting a lot of traction. Should apply for a federal trademark to protect it?

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Answer: Filing for a federal trademark can be an expensive endeavor, costing thousands of dollars. So unless you have the resources, it might be best to try more cost effective ways of protecting your brand.

The good news is you don’t necessarily have to do anything to have a protectable “common law” trademark.

Let’s back up a little: A trademark is a unique indicator of your business, its products and/or services. It can be a word, symbol, sound or any other indicator of who created it. (Think, for example, of the Intel chime that plays in every television commercial.)

The words in the trademark can’t be descriptive of the product or services, nor (obviously) can they be in conflict with other trademarks for the same goods/services. For example, “Apple” would not be a valid trademark for fruit, but it is for a computer company.

It’s therefore critical to conduct a thorough search for anyone who may already be using the same or similar mark.  If no one is, the key to establishing and protecting your trademark in common law (without registration) is to actually use your mark in a consistent manner in connection with your product and/or service in commerce.

Under common law, all you need to do is be the first one to use it and you can have it as long as you want (assuming you continue to use and protect it).  Inserting the “tm” symbol after the word lets you claim ownership – and once the public associates the mark with your particular goods or services, you’ve established a common law trademark.

However, it is important to understand that the common law trademark is not global. It’s limited to the geographic area where your products are sold or services are rendered.

Filing a trademark registration with the appropriate state department, a federal trademark registration with United States Patents and Trademark Office (“USPTO”) or even a foreign trademark registration with World Intellectual Property Organization (“WIPO”) will entitle you to additional protection and rights.

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Unlike copyright protection, trademark protection is not mentioned in the United States Constitution – so, Congress created trademark law. Because of the idiosyncrasies of federal law, that doesn’t come into play unless there is some type of interstate commerce.  If your company conducts its business in one state, a state level trademark may be all you need.  (This site will give you access to your specific state’s trademark office.)

There is also the option of the United States Trademark. You can recognize these by the distinctive ® symbol after the mark. The benefit of a U.S. Trademark is that after five years it becomes incontestable and you become eligible for statutory damages if someone infringes on your mark. Being incontestable means that the trademark may not be attacked for being merely descriptive (even if it is), and there is a presumption that the mark is valid, regardless of whether it is or not.

The hitch here is that filing for a United States Trademark can be time consuming and expensive, since you need to first do a thorough search to see if the trademark has already been claimed. Then, an attorney reviews the search and files the application with the USPTO, which will evaluate the trademark to see if it is too similar to any other already existing marks.

If not, then it will publish the mark and allow other businesses to object. Barring any, then you will be granted a trademark after a set amount of time.

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If your business is truly global, consider registering your mark with the WIPO. Unfortunately, there is no global trademark registration system that creates a valid trademark worldwide.  However, WIPO currently has 184 member countries, including the European Union and China, and administers the Madrid system of international registration.  The Madrid system allows a trademark owner to obtain trademark protection in any or all member countries through a single administrative process rather than filing in each one.

If your business plan involves retail, brick and mortar, rather than online retail on a global scale, it may make sense to just go with the common law or state trademark registration.

Startup owners: Got a legal question about your business? Submit it in the comments below or email Curtis directly. It could end up in an upcoming “Ask the Attorney” column.

Disclaimer: This “Ask the Attorney” post discusses general legal issues, but it does not constitute legal advice in any respect.  No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  VentureBeat, the author and the author’s firm expressly disclaim all liability in respect of any actions taken or not taken based on any contents of this post.

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