Learn all about trademarks, service marks, and copyright from legal expert, Susan Burns
There’s so much to consider when starting and running a small business – we at Invoice2go want to make sure you’re empowered with the best tools and information possible. We recently sat down with an expert in all things business law, Susan Burns, in our Subscriber Success Facebook community to go over all the trademark basics that small business owners need to know.
Check out the video to watch her presentation, or read on for a summary of what she discusses. Let’s dive in:
What is intellectual property?
Intellectual property relates to three general areas: patents, copyrights, and trademarks. However, here we’ll mainly cover trademarks and what you need to know about them to maximize your potential as a small business.
A trade name is a name that you will use for your business, a name people will know out in the world. Trademarks and Service marks are the same type of thing but with a minor difference.
What is a trademark?
A trademark or service mark is a word or symbol used to identify a source of goods. Trademark deals with specific goods whereas, a service mark is if you brand the service.
When you brand your product, you can gain rights if you are using it in your local area, granting you common law trademark rights. However, if someone takes that same name and registers it with the federal registry, they will have more rights than you.
This means that they could sue you if they feel your brand is too close to theirs. Susan recommends trademarking because even if you’re just starting your business and don’t know what the future holds, having the trademark grants you additional benefits. Let’s try to ignore any unnecessary lawsuits.
What can we trademark?
It has to be non-offensive, non-generic, and can’t be something that is already used or similar. As long as your goods or service don’t sound similar to any other brands, then you are good to go.
You can’t trademark a generic term, like food, but you can trademark it if used in an unexpected market. (Can’t trademark Apple for food, but you can trademark Apple as the name of a technology company.)
A service mark would be the name of a studio or construction company. Still, a goods mark or trademark would be Nike Runnings Shoes or Apple computers. The term trademarks can be used for both service marks and trademarks.
If trademarking is the path you need to complete next for your small business, Susan highly recommends it.
Benefits of registering your trademark federally
You have to complete an application to register your trademark. It may seem like a long and arduous process, but it is a process that would be beneficial for your business. The benefits of doing this are that it:
- Gives notice to the public to show that it is your product/mark
- Registers exclusives rights to the trademark nationwide
- Grants an ability to bring any lawsuits concerning the use of the mark
- Getting this registration means that you can apply for rights in foreign countries
If you are serious about seeing your business grow, registering gives you the ability to protect your business. It also helps you attract more customers by being recognized as the only one.
It can be a long process, lasting from 12-14 months in some cases but a worthwhile one. The first process will be the pre-application period. During this time, you start conducting research based on finding what names are available.
You can google search or find a database of all trademarked names. Getting a professional to conduct the search could be beneficial as they will tell you what names are available and the likelihood of success for your registration.
Every trademark registration goes through an examination process where attorneys hired by the USPTO will decide who gets which trademark.
The Application Period
When you believe you are ready to register, you have to make sure you include all the procedures the USPTO lays out.
These include providing the correct fee, class identification, the basis for filing, and specimens. Specimens are what you are going to trademark.
Office Action Period
After you have applied, the patent office will tell you when they have received your application. During this time, they could send you an email detailing any problems with the application, things that they don’t think are right.
However, if you have done your research and are confident that there are no problems, you will be ready to go. Once they have done this, the trademark will be published for opposition.
This period is when the public can oppose your use of the trademark and inform the USPTO. They could say that the mark is similar to theirs, then you will have to engage in a battle for your mark. Let’s hope your business doesn’t have to go through this.
Susan says that there are always lawyers researching new trademark requests and are ready to oppose any marks that they deem similar to their clients. Even if you think there are no similarities between your business and someone else’s, they can still oppose it.
If there is no opposition, you can claim the trademark as your own and pay the fees required.
Choosing a Mark and Class
Always make sure the name you pick will pass the examination. Being more unique and clever is advantageous as it means there will be less competition for that name. Also, make sure you pick the right class of goods for your goods or services.
There are 45 total classes, and you need to pick the right one for your trademark. The price ranges from $225 to $325, so ensuring you find the right class for your service or goods will be very important.
Another key tip from Susan is that you, as a business, can use the symbols TM & SM as a way of alerting the public to your business. There is no registration to do this; however, there is one if you want to get the R symbol. The R symbol means the company is registered with the USPTO, and nobody else can use that name federally. It could also be used as evidence in court if you get into a battle over the mark. Having a TM or SM with your name is a way to show you have had the name already.
Ultimately, a trademark is an excellent asset for a business as it adds value. It provides you the ability to stop others from impersonating your company. If you choose to sell, it shows that your business’s intellectual property is secure. Gaining a trademark for your company is a valuable tool and one you should look into for furthering your business.