3 Questions to Consider for Your Situation
Many business owners I speak to have at least considered this question of whether to seek registration of their trademark. Yet, what often happens is they go back and forth in deciding and then a more pressing issue arises and this concern gets put on the back burner. This article will outline 3 simple questions to help you quickly decide whether you should register your trademark with the United States Patent and Trademark Office (“USPTO”). I know you’re probably thinking, “Of course an article written by a trademark lawyer is going to tell you to register your trademark!” But the truth is, registration isn’t necessary in every circumstance.
It is important to note that by simply using your trademark in the marketplace, certain protections are yours. These protections, however, will typically only apply to where your business has been conducted. So, what does it matter where your business will engage?
Question #1 – Will My Business Always Be Local or Will We Sell and Expand into Other States?
For many business owners the vision for their business does not extend beyond the city they currently operate. They are and always intend to be a local business. This may be a hair salon, a car repair shop, an ice cream shop, and more. If this is you, then going through the time and effort of registering your trademark with the USPTO isn’t as crucial as if you were planning to have your business sell products or provide services across the country.
Registering your trademark with the USPTO grants you the ability to be the sole user of that name, logo, or phrase across the country (within that class of goods/services). As soon as you begin using a trademark in your local area, however, as long as you are the only other person in your area using that trademark, and that trademark has not been registered federally, you have protections granted that would provide you relief if someone else were to infringe upon your mark.
Simply put, if your long term plan for your business is to just stay local, registering your trademark with the USPTO may not be necessary. If your long term, or even short term plan is to offer your product or service in other states you should absolutely get started right away with the process to register your trademark.
Question #2 – Would the Trademark Even Have a Chance to Receive Registration?
While the legal standards and statutes used by the USPTO to determine whether a trademark should be granted protection or not can be tedious and complicated, there are certain types of trademarks that aren’t worth going through the time and expense to try and register.
One of the grounds for rejecting a trademark application is if the USPTO finds your trademark is “merely descriptive.” This just means that you can’t receive trademark registration for terms that describe the product. The USPTO uses “Creamy” as an example of something that couldn’t be trademarked for yogurt, or ice cream because it is merely descriptive. Another example would be “World’s Best ______.” This is seen by the USPTO as being merely descriptive and wouldn’t receive a registration.
Another grounds for rejecting a trademark application, is if the USPTO decides your trademark is too “generic.” An example of this would be something like, “Grass and Landscape Maintenance Company” or something similar. If it has the name of what you sell or do right in the name, you should think twice before attempting to register your trademark.
So, when considering if you should register your trademark, ask yourself if the name of your business or product is either generic or merely descriptive. If you aren’t sure, feel free to reach out to us and we’ll be happy to discuss your situation with you at no charge to you.
Question #3 – Do I Plan on Using This Trademark for More Than a Year?
Many ventures are brief in nature, and as such may not require a trademark to be registered. Something like a one time summer camp, or an educational seminar that won’t be annual, or a pop up shop. I pose this question in the time of one year because typically to receive a trademark registration you’ll be waiting a minimum of 6 months and it could last many months past a year. So to go through this process when you’re only going to be having a short term business doesn’t make a whole lot of sense.
This one year time frame is usually a good place to start when considering trademark registration, but a longer term view is often the most prudent and wise. Even if you plan to quickly assemble a business or product so it can be acquired by a larger company, having the intellectual property in place will be a key factor in negotiations.
As you can see, there are indeed instances where going through the process of registering your trademark may not be necessary or even worth your time. Here at MZJ, we offer free consultations to discuss every part of the trademark process with you. From deciding on a name, to licensing your name out to other companies, and more. We assure you we will give the advice that best fits your situation, regardless of what it means to our bottom line.