There are five considerations every business owner should think about when making the decision to register a trademark.
- When you want to protect the goodwill of your brand
- Once you decide which way you want to file your trademark
- When you’re ready to file as soon as possible
- After conducting your due diligence
The fourth consideration is that you should file for trademark protection after conducting your due diligence.
You want to conduct due diligence before spending money on a federal registration. For instance, the USPTO has a database that lets you search for similar pending or registered trademarks.
By conducting due diligence, you will develop a better understanding of whether your mark will be published by the USPTO.
- After making a business (and personal) decision
First, you should register for a federal trademark when you want to protect the goodwill of your brand. Small business owners spend hard-earned money building a brand.
By registering your trademark with the United States Patent and Trademark Office, you can protect your company’s goodwill from potential infringers. Specifically, you can bring a lawsuit for trademark infringement in federal court. Or, you can send a cease and desist letter, indicating that you have the federal rights to your trademark.
By not protecting themselves with a federal trademark, you risk other companies using a trademark that is identical or highly similar to yours. In certain instances, other companies may argue that you are infringing on their trademark rights, especially if they file for a federal trademark before you do.
To avoid this scenario, federal trademark registration, fortunately, allows broad protection for your trademark across the entire United States.
Business owners and entrepreneurs should first consider whether there is a trademark – whether it be a company’s name, an expression, or even a logo – that they believe promotes (or will one day establish) brand value.
If you believe that a word or a logo does or will be important for brand value, you should strongly consider federal trademark protection.
Once you decide that you want a trademark, there are two specific ways to register your trademark:
(1) When you already are selling products or providing services with the trademark or
(2) When you intend to sell products or provide services with the trademark.
The first option means you’ve already begun using the trademark with your products or services. For instance, you may have already sold t-shirts or provided bakery services with that trademark.
The second option means you have a bona fide intent to sell a product or provide services with a trademark. This means you are making a sworn statement that you have a true intent to use this trademark to sell products or provide services with a trademark.
The third consideration is to file as soon as possible.
Put simply, the early bird gets the worm when it comes to federal trademark registration.
Federal trademark registration is first to file, meaning the first one to file will get “priority”. Therefore, if you are already using your trademark or have a true intent to use that trademark, it is advisable to file as soon as possible. By waiting, you risk others scooping up that federal trademark registration from you, even if you were technically using it before them in business.
The fifth consideration is that you should file after making a business (and personal) decision.
Filing for a trademark is a business, legal, and personal decision. It involves weighing the potential legal and business risks of not filing for a trademark, and the impact of not doing so on your brand value.
Ultimately, you want to think a great deal about the brand of your business, and spend considerable thought on what names or logos you want associated with that brand.
Maybe you hire an artist to help you with a certain logo, or workshop names for a company with friends, family, and even focus groups.
Remember that this trademark is a long-term decision. You want to make sure you love this name or logo! If you’re ready to learn more, download the free Trademark Guide now.