One of the first big decisions for any startup is picking a company name, logo, or slogan, all of which may be trademarked. Simply put, a trademark is what your customers use to recognize your business and distinguish it from other businesses.
A trademark can be a word, phrase, symbol, or even a sound. As a piece of intellectual property, your trademark uniquely identifies your company, and you may bring an infringement action against anyone else who attempts to use it without your permission. You also have the option to register your trademark with the United States Patent Trademark Office (the “USPTO”). While registration is not a requirement, it does provide a number of benefits.
Trademark Clearance
It is important to do your research before settling on a name or symbol to represent your business. Waiting until after you have built a reputation on an existing name could be a major setback for your startup, particularly if the company whose name you are using files a trademark infringement lawsuit against your business. Also, be aware that while you may be able to register your name with the California Secretary of State, it is still possible that another company is using this trademark and you may be infringing on their rights.
A simple internet search will show if another business is currently operating with the name or symbol in question. You should also check to see if any similar names show up in your search. The next step is to check the U.S. Patent and Trademark Office’s online database for exact and similar company or product names. A startup attorney can assist you with a “full clearance” search, which will examine thoroughly all industry publications and directories.
Trademark Creation
You are not required to register your trademark to have protection. By simply being the first to use a trademark in connection with your goods and services, you will have the right to use that trademark within your geographical area. In other words, so long as you can prove that you put the name or symbol into use before anyone else did, you are protected. Bear in mind that the burden is on you to supply evidence of being the first to use the trademark.
So, if you decide not to register your mark, it is important to create strong brand awareness and actual notice of your name or slogan. Branding efforts and media exposure such as creating a website, launching social media campaigns, and utilizing advertisements will help protect your use of the mark.
Reasons to Register a Trademark
Registering the trademark with the USPTO offers a number of benefits. It provides you with implicit proof that your startup was in fact the first one to use the mark, which acts as a deterrent to others that might use a similar name or slogan. This protection extends to all states. By contrast, an unregistered mark typically only provides protection against other businesses using the same name in Los Angeles or California. Further, if someone infringes on your trademark, registered status gives you the additional option of suing them in federal court.
Options for Registration
You may qualify as the first user of a trademark through actual use or intent to use. The intent-to-use application, filed with the USPTO, allows you to reserve the trademark even before your business gets going. After filing you will have six months to put the mark into use or pay a fee for an additional six-month extension. With few exceptions, you must start using the mark or you will lose it after three years.
Alternatively, you can file an in-use application. In this case, you must show that your startup is currently using the mark in commerce, and demonstrate that the name or symbol is distinct from all other registered trademarks. To be considered distinctive, your mark cannot be overly generic or too simply descriptive, such as a basic geographic name like Los Angeles Car Wash. The more fanciful or unique the name or mark, the more likely it is to be considered distinctive.
Next Steps
A qualified attorney can help you navigate the many requirements for trademark registration, and help you determine the best option for your startup. Generally speaking, the right to use a trademark comes down to which company can prove they started using it first. Do not hesitate to take the next steps as soon as you think of a great name or slogan for your startup.