Learning the legalities of running a business means introducing yourself to a lot of rules, practices, and terminology that can be somewhat muddy and confusing.
That’s why today, we’re going to shed light on one legal topic that affects many business owners: trademarks. What is a trademark, what parts of your business can you trademark, and when you might consider registering a trademark to protect your business?
We spoke with Christina Scalera, founder and legal brain behind The Contract Shop, which sells contract templates specifically designed for independent creatives and entrepreneurs. Her experience spans both growing her own brand and working with clients to build and protect their brands, too. Though we can’t offer specific legal advice, Christina offered a thorough introduction to what interested entrepreneurs need to know about trademarks from Day 1.
Please note that this blog post is for informational purposes only, and does not constitute professional legal advice. Please consult independent legal advice for information specific to your country and circumstance.
What is a trademark?
A trademark is anything that’s considered a source identifier.
Think about a product you recently purchased. How do you know which brand you bought it from? Anything that helps you identify where your product originated, from the name of the product to the color of the packaging, could be considered a source identifier—but just because something helps identify the producer, doesn’t mean it’s necessarily something you can trademark.
Think about a product you recently purchased. How do you know which brand you bought it from?
For a more concrete list, it’s possible to trademark:
- Business names
- Service names
- Product names
One thing Christina made clear is that while you can trademark names, they need to be more than just descriptive. As an example, she says, consider Key Smart® key fobs.
“You couldn't just register ‘key fob,’ but Key Smart, Inc. has a registered trademark for ‘Key Smart’. So when they talk about their products, it's Key Smart® key fobs. You’ll see similar things from big companies like Johnson & Johnson, where they sell Band-Aid® bandages. A trademark is always the source identifier, and it can be followed by the generic product category or name. Band-Aid® is the trademark, bandages is the product.”
Which parts of a product name you can trademark apply to the names of anything your business sells, including digital products and services.
“I register the names of all my courses. I can't register “wedding photographer contract,” because it’s completely descriptive, but I might be able to register the name of a course like Legalize Your Biz™, a legal course for online entrepreneurs. It’s a good trademark because it’s a unique phrase, and it’s not just descriptive.”
How do you get a trademark?
As soon as you start a business or develop a product, you likely have some source identifiers, including your name and your logo. The question is, do you need to be thinking about trademarks right away?
There are two ways to get a trademark, and one is more formal (and involved) than the other. You can informally get a trademark by doing business using a name or a logo, and establish your reputation and mark that way (this is often called an unregistered or common law trademark). However, Christina also recommends you consider trademark registration when your business picks up traction, given the costs associated with registration.
Step 1: Confirm the mark is available
You can do a portion of this work yourself by following the tips we outline below. However, to get a definitive answer about your ability to use a certain trademark, it is always best to consult with a trademark attorney.
First up, when you have a unique idea about a name for your brand or products, it’s a good time to see whether they’ve already been registered as part of your competitive analysis. You can do that by looking up your potential trademark using online databases that are maintained by the governments of the countries you do business in, so start in your home country.
Here a shortlist of the databases you may want to check, and remember to check the database for each country in which you do business:
“When searching for your trademark term, use quotation marks to get an exact match, and run a search for each of the terms within the phrase if there’s more than one,” says Christina. The quotation marks will ensure you’re getting exact matches for your search, so you’re not wading through largely unrelated results.
Even if results do show up for your chosen trademark terms, that doesn’t mean they’re immediately off the table. In the US, trademarks are based on use, so if it’s not being used—even if it’s been registered—you might be able to challenge the registration and claim the name for your business with the help of a trademark attorney.
“Trademarks are the opposite of domain names,” says Christina. “If you don't use it, you lose it—it’s not a one-time registration thing.”
Christina recommends further research if you do come across a result for a term you want to trademark. For example, someone may have registered a trademark but since gone out of business, and given that US trademarks are based on use, that could signal that the trademark might be available.
After you’ve searched through the databases, Christina recommends Google as a next step. “Go to Google and run the exact same searches to see what pops up,” she says. “If you found results in the trademark database, you know you’re going to get hits in Google, but you want to see how many and how active they are. Ideally, even if you get a few results, you’re looking to see if there’s been any activity on those sites.”
Finally, make sure to search social media to see if there’s any activity using the trademark you’re considering—tools like Namechk can surface social profiles using your desired name. If you don’t find anything recent, that’s another promising sign.
“If you're finding this is a term, phrase, or name that no one's using, that's a great indication it could be available, and that you're ready to take the next steps to register your trademark.”
Step 2: Consider registering the trademark
If you decide you’re ready to officially register a trademark, Christina advises getting in touch with someone who can provide legal advice specific to your business. Consider working with them to perform a more thorough search of what else is out there before you invest the time and resources to apply for a trademark registration.
“Only a licensed attorney would be able to definitively give you advice and say ‘Yes, go out there and use your trademark, and let’s register it,’” says Christina. The process of registering your mark can also be fairly technical and involved, so it meets the criteria of something that’s much better to outsource to an expert.
Step 3: Protect your trademark
Successfully protecting your trademark means you’ll need to both consistently use the appropriate trademark indicators, and take action when you notice someone infringing on your mark.
Use your ™ or ® marks
You’ve probably seen them around, but it’s easy to skip over these trademark identifiers until you want to use them for yourself. Christina shares a breakdown of what each one means, and when to use it:
- ™ : You can start using the ™ symbol on any name or logo you consider a trademark, but make sure that you’ve done all the required research ahead of time to ensure you’re not infringing on an existing mark.
- ®: This is the symbol for a registered trademark, and you can use it once your trademark is officially registered.
Take action against infringement
Protecting your trademarks goes further than marking them appropriately. You also need to watch out for people copying or using your trademarks, or using similar marks in your industry—failing to take action to protect your mark could eventually result in losing your trademark because of a concept called dilution.
“If someone comes out with a product or a brand using a registered mark that you have, or comes out with something that’s really similar and in your industry, that’s an important time to speak with an attorney,” says Christina. “For my clients, I will always reach out to let the other business know that this is a registered mark, and they can’t use it because it dilutes the value of my client’s trademark.”
“Think of it like a bathtub full of water. When a competitor comes along and uses your trademark once, it’s like adding a drop of blue water, so now the whole tub is blue. Someone else uses your mark, and they add a drop of red, so now the water is purple. Eventually, the water is dark because of all of the other uses—and when that happens to your trademark, you can effectively lose it. That’s why it’s so important to be aware of and challenge any unauthorized uses of your trademark.”
Losing your trademark happens when you can no longer claim that the original mark, whether it’s your logo or your product names, is a source identifier. The reason is because if everyone in the industry is using the same naming, it no longer identifies something that’s uniquely yours. After all the work and the money that goes into getting a trademark, taking action against infringement is crucial to protect your mark and your investment.
“Protecting your trademark is a really big deal, and it bothers me so much when people don’t act on infringement," says Christina. "You genuinely risk losing your mark by not taking action. I always ask, ‘How much money did that cost you, because I'm sure it wasn't cheap.’ It's the equivalent of buying a first class plane ticket and then not showing up for your flight.”
But a word of caution: Defending your trademark is something that’s best left to the professionals, especially when it comes to contesting a pending trademark application. Christina previously worked as a trademark attorney for a major corporation, and her advice is to focus on what you do well—running your business and creating great products—and let the lawyers handle the details of protecting your marks.
Trademarks can help protect your business
There’s a lot you can do to proactively protect your intellectual property when you’re running a business, and trademarks are just one part of the overall picture. While they’re not a silver bullet, and you’ll still need to be vigilant for infringement, especially in your industry, trademarks can offer a form of protection for the hard work you put into building a brand that stands out.