When it comes to trademarks, who has rights to what?
It’s a question that even the most famous brands grapple with. Consider Apple Inc, purveyor of Macbooks, Airpods, and iTunes, among other things. But in 1978, Apple Inc was Apple Computer and Steve Jobs, owner at the time, ran into legal issues with Apple Corps, the owner of the Beatles’ record label, Apple Records. (That’s a lot of Apples.)
Apple Corp sued Apple Computer for trademark violation, a legal battle that lasted for three years until both parties settled with the agreement that Apple Computer would never enter the music industry.
Suffice it to say, circumstances changed.
In 2003, Apple Computer announced iTunes, and while music lovers rejoiced at easy access to their favorite artists, the new product revived the legal battle between the Beatles’ label and Steve Jobs. This time, the legal matters dragged out in court until 2007 when parties agreed that Apple would drop “Computer” from its name that year, would own of all the trademarks related to “Apple” and would license certain trademarks back to Apple Corps—including Apple Corps’ previously used logo of a Granny Smith apple.
The moral of this story—besides being cautious about including “Apple” in your trademark assets?
Getting ahead of your trademark needs is critical. Apple Inc came out ahead in this case, but as a massive tech conglomerate, they had deep pocketbooks for their legal cases. For most businesses—even incredibly successful ones—a trademark infringement case can pose major challenges to their ability to deploy their brand assets.
What is a trademark?
Trademarks distinguish brands from one another, particularly when they provide similar goods and services. Any design, symbol, name, or word that identifies your business and separates it from others can become a registered trademark. Even a sound can be fair game, in the right circumstances. That’s right, sounds like the Pillsbury Doughboy’s famous giggle and Homer Simpson’s equally famous “D’oh!” are trademarked sounds.
Trademarks can foster brand recognition, but that’s not their only function. When thoroughly established, business owners may be able to receive a variety of legal protections when their brand collateral is trademarked.
Keep in mind that, technically, not all trademarks need to be registered. A trademark is established as soon as you use it in association with selling your products and services within the limited geographic range in which you operate—unless someone else can prove ownership of the mark. This basic form of trademarking is known as an unregistered trademark or common law mark.
Because the rights and legal protections of a common law mark are limited, though, many business owners prefer to register the words, phrases, and designs that identify and distinguish their business with the United States Patent and Trademark Office (USPTO).
Do I need a trademark?
Technically, registering a trademark with the USPTO is optional. You needn’t pay a cent to enjoy the (limited) protections a common law trademark can offer. However, registered trademark owners enjoy an abundance of legal rights and protections that owners of common law trademarks don’t.
Consider how much time, money, and energy you’ve poured into building a positive reputation for your business. How would you feel if another business swooped into your market space and capitalized off of your confused customers?
If you’d prefer to protect the fruits of your labor, then you need a trademark.
Otherwise, someone else could use the same words, phrases, or imagery to promote similar goods or services, confusing your customers and—if their service is subpar—potentially damaging your brand’s reputation along the way.
Why file if I have common law rights?
Common law rights are limited to the geographic area in which you render goods or services. For example, if you sell personalized baked goods in one town, your common law rights won’t prevent another bakery from selling the same types of goods under a similar business name in the next town over.
Over time, this could impact the number of customers that find their way to your bakery—even if you get lots of referrals, run effective marketing campaigns, or win a blue ribbon at the state fair for your cowboy cookies.
At what point should I register for a trademark?
As soon as possible.
Otherwise, if you don’t register your trademark and someone else does, you could end up having to change your business’s name or branding entirely.
If you’re planning to begin using a new trademark within five years, consider moving ahead with your trademark application process. With your trademark safely registered, you can focus on growing your business while avoiding the dreaded scenario of someone else cornering the market before your idea takes flight.
Benefits of registering for a trademark
Not convinced? Check out these benefits of filing a trademark for your business.
Nationwide priority of use
Common law trademark protection only applies within a limited geographic area. By contrast, registered trademark protection establishes your ownership of the mark in every state.
If you intend to operate your business online or in multiple geographic areas, this is one of the top benefits of registering a trademark.
Reduces enforcement costs
In most cases, aspiring business owners can search the Trademark Electronic Search System (TESS) to avoid infringing on active trademarks with their branding.
Of course, some determined folks just won’t be deterred. When this happens, it’s up to you to exercise your right to trademark protection. Fortunately, a registered trademark makes it faster and more affordable to enforce your rights—often without the need for litigation.
If litigation becomes inevitable, a registered trademark will be considered prima facie evidence. In other words, you won’t be tasked with proving when and under what circumstances you assumed ownership of the mark.
After maintaining a registered trademark for five consecutive years, you can also file an Affidavit of Incontestability for additional trademark protection. This type of affidavit states that your trademark can’t be contested in a federal court and eliminates almost every defense violators could use, whether their infringement is intentional or not.
(And if this all sounds stressful, know that working with a trademark attorney can take some of the heavy lifting of trademark enforcement off your shoulders!)
Increase the value of your business
Trademarks increase brand awareness, and the value of a trademark is directly tied to the amount of goodwill associated with it. This can be difficult to quantify, but generally speaking, the more people who view your trademark positively, the more value it adds to your business.
In addition, trademark protection also introduces the option to enter into license agreements with other companies, which may add even more value.
Expand internationally with ease
If you’re hoping to take your business to new horizons, you may be disappointed to learn that there is no such thing as a “world trademark.” However, there are steps that a Texas trademark attorney can help you take to legally expand your business internationally while protecting your brand.
There’s no guarantee that your trademark application will be accepted in every foreign country, but submitting an application to the Madrid Protocol allows you to apply for a trademark in over 100 countries at once.
The basis for a successful application? A registered trademark!
Credibility and discouragement of infringement
The right to include a registered trademark symbol (®) on your products can add credibility to your brand and demonstrate to counterfeiters that your company takes intellectual property rights seriously.
Customs and border protection
When your Texas trademark attorney sends proof of ownership to the U.S. Customs and Border Protection database, customs will prevent infringing goods from being imported into the States.
This is an affordable way to help protect your company’s reputation from damage caused by look-alike goods.
Protection from lawsuits
Over 76% of consumers search for a company’s online presence before visiting a physical location, let alone making a purchase. Without a registered trademark, there’s no easy course of action if a similar, unregistered brand or deliberate copycat siphons web traffic away from your legitimate website and social media pages.
With your proof of ownership of the mark, many sites are willing to take down infringing or fraudulent accounts without needing to file a lawsuit.
Work with a Texas trademark attorney
A registered trademark is an excellent way to establish authority in your industry and protect the future of your business—but you need to submit a complete and accurate trademark application. The process can be complex, but the law firm of Shann M. Chaudhry, Attorney at Law, Esq., PLLC, can walk you through the process and mitigate any potential complications that may arise with your trademark application.
Whether you’re in the early stages of establishing your brand or are concerned that you’re at risk of a lawsuit for infringement, contact us to learn more and schedule a consultation.