Do I Need to File for a Trademark? – Transcript

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[Intro Music] This is Office Talk with Annette Stepanian.


Hey, welcome back. This is Annette and I’m back with another legal quickie episode where I answer commonly asked questions about the law in about 10 minutes or less. This week’s question is all about trademarks. And particularly – Do I need to file for a trademark? If for some reason you don’t know what a trademark is, I’m going to first dive in and talk to you about what that is, what the difference is, as it compares to copyrights and patents. But then I’m going to answer the question, when should you really determine if filing a trademark application is right for you?

So the first question is, what is a trademark? So I see a lot of confusion amongst folks about the differences between copyrights and trademarks, and patents. And the reality is that all three of those elements, they constitute something called intellectual property. So they all fall under this big intellectual property law umbrella. However, they each govern different types of work. And they each have their own sets of laws.

Trademarks, in particular, I like to think of those as really protecting your brand elements. So think of your logo, your slogan, your name. And I always use this example, I use the Nike example, because most of us have interacted with that brand at some point or another. But if you think about Nike, as the brand name, that swoosh that we have seen and grown so accustomed to that is the logo, and just do it is their slogan. So those are all elements that we would want to protect under trademark law, because one of the reason that trademarks exist is to prevent customer confusion about those products or services in the marketplace, right? You know, you as a business owner, you are investing in your brand, you’re trying to create some sort of goodwill, so that people when they see your logo, or they see your brand name, or they hear your slogan, they know that just do it, for example, is associated with Nike’s products and not somebody else’s products.

Now, there may come a point in time when you determine – “hey, I really want to really protect my work”  – when it comes to my mark, whether it’s your logo, your slogan, or your name. So the question inevitably comes up is, you know, when is a good time for me to file a trademark application in my business? You know, or do I even need to do one?

In the United States trademark ownership is actually determined by who first uses the mark in a commercial context. Okay, so the first person who goes out in the marketplace and uses the term Nike, in association with let’s say, sporting goods or sporting apparel, they technically have the ability to claim that that trademark as to the term Nike belongs to them. Because they were the first person to use it out in the marketplace. By registering a trademark with the US Patent and Trademark Office, you have some other benefits. So in the event you ever want to sue another for trademark infringement, it creates a presumption that you were the first to use the mark in commerce, and that the person who later used your mark actually deliberately copied the mark. Okay. So it’s important for you to understand that just because you register your trademark with the US Patent and Trademark Office, it doesn’t mean that you technically own the trademark. Someone can always come along later and say: “Hey, I am actually the first user of this in the marketplace.” However, by having that registration with the US Patent and Trademark Office, what it does is it creates that presumption that you were in fact, the rightful owner. And so therefore, the person who’s making the argument that in fact that mark belongs to them, it’s on them to prove that that’s the case.

Okay, so I hope you guys are still with me. So then the question becomes, how important at what time, should I as a business owner start thinking about trademarking my brand, or my logo, or my slogan, or whatever it is that you want to protect? In my opinion, I think you need to think about it before you start. The reason is that you want to confirm that your proposed mark isn’t actually infringing on somebody else’s mark. Okay, so sometimes we come up with ideas, and we come up with a slogan or a name, and we think we’re so creative. Oh, wow, I’m just such a genius. I can’t believe nobody’s ever thought of it. Well, I hate to break it to you. But it’s possible that somebody else that has already thought of it is just that you have never seen it. So it’s important for you to conduct your search just to make sure that the trademark or the mark that you intend to use isn’t already registered by somebody else, or is not in use by somebody else, regardless of whether or not it has actually been registered with the US Patent and Trademark Office.

The second point in which you want to think about filing a trademark application with the US Patent and Trademark Office is when you’re about to make a significant investment in your brand. Okay. So I think that it’s important at that level to really think about it because you’re about to invest a lot of money, let’s say into product or you’re going to be printing 50,000 t-shirts with your brand name on it, you want to make sure that that mark is available to be used and is protected.

Now the topic of trademarks is a huge one it I really recommend that you start thinking about that as part of your business planning process, especially as you see your business growing. It is something that you would want to invest in because your brand name, your brand logo, your brand identit. Essentially, that is an asset and you want to protect that. And one of the ways you do that is by filing a application with the US Patent and Trademark Office. Now the topic of trademarks is such a huge one. However, I hope this is just giving you a little clarity on what a trademark is and why it’s important for you to think about registering your trademark with the US Patent and Trademark Office.

So that’s it for this episode. I look forward to seeing you back here next week with another episode of Office Talk.

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