5 Honest Reasons You Should Not Register Your Trademark

5 Honest Reasons You Should Not Register Your Trademark

This guide will help you make a decision to start the trademark process

Often, clients come to me really excited to work together to register their trademark. We hop on a phone call, and I ask them some questions. At that moment, I’m trying to gauge whether it’s a good fit and the likelihood of trademark approval. 

Of course, I have to do my own research, but I’ve also picked up on some cues that raise red flags. When I hear one of those cues, I have to let the client know that maybe they aren’t ready or it’s time to go to the drawing board with their trademark. 

Knowing whether or not you should register your trademark is difficult. There’s also this underlying pressure that you feel from other business owners to take the next step, but you’re not even sure if this is the route you want to take.

It takes some research but there are also mindset issues that clients need to work on to make this decision. This 5 step guide will give you the clarity on whether you want to take that next big step in your business and register your trademark. 

  1. Name you chose is similar to another registered trademark

    If you’ve looked on Google or TESS (Trademark Electronic Search System), and found a trademark that is similar to yours, then you want to hold off on registering your trademark.

    First, if the registered trademark owner is monitoring the trademark, then you’re bringing unwanted attention to yourself. The trademark owner can and should send you a cease and desist letter. With that letter, sometimes come with a demand for money. Additionally, if you refuse to change the name and go forth with filing, you’ll also receive an office action from the trademark office. This office action will state they are rejecting your trademark for likelihood of confusion. Likelihood of confusion is when your mark is very similar to a registered trademark or pending trademark application. The ™ office believes that consumers will confuse your trademark with the registered one.

  2. The trademark you’re using is a common phrase

    So many businesses and celebrities try to register viral phrases. It’s getting much harder to register these phrases because the Trademark Office considers them common. If you are trying to trademark a viral phrase, make sure you register it immediately before it becomes “common”.

    If you wait a while, then it’s best not to register, because the ™ Office will likely reject it. They do not believe that these phrases are source indicators for a product or service and therefore, not registrable. Usually you’ll be issued an office action. You have the option to respond and argue that your phrase isn’t common.

  3. You are only selling your product or service locally

    If you have no intention of expanding outside of your city and you don’t sell online, then you don’t need to register your trademark. Trademark registration gives you the national rights to your brand, but there are certain guidelines you have to meet.

    If you have no intention of expanding outside of your city and you don’t sell online, then you don’t need to register your trademark. Click To Tweet

    One of those guidelines is that your trademark needs to be used in commerce. Use in commerce refers to the product being sold and shipped within the United States in the ordinary course of trade with the mark preferably displayed on the product itself or on external materials such packaging, tags and labels.

    This means if you’re only selling to locals, then you would not qualify for trademark registration. There are some exceptions, but we won’t be discussing that in this post.

  4. You haven’t found your forever name

    If you don’t like the name of your business, then don’t waste your time or money registering a trademark. Once you’ve chosen a name that sticks, then you can start the registration process.

    I’d also add that if you don’t love your logo, hold off on trademark registration for the logo.

  5. You won’t monitor or defend your trademark

    Trademark registration isn’t over once you get the certificate. Now is the hard part. Now you have to stop people from using your trademarks without your permission.

    If you have no intention on keeping up with others and forcing them to remove your registered trademark from their products or services, then you’ve wasted a whole lot of time and money.

    If that’s just something you don’t want to do or hire your attorney to do it for you, then skip out on trademark registration. Not monitoring and defending your trademark can lead to a generic mark, which no longer has legal protection. See the guy that registered the trademark for “escalator” and look at how that turned out for him. *Spoiler alert* Escalator is no longer a registered trademark.

If you’ve gone through all of these points, you should now have a better understanding about trademark registration. And as a trademark attorney, I honestly believe that not every business needs one. If one of these reasons resonates, take a step back and really think about whether it’s right for you. 

Do you think your business needs one? 

If you’d like to learn a bit more about the trademark process, then grab the roadmap below. It’s a step by step guide of what to expect when going through the registration process. 

Should I hire a trademark attorney to register my trademark?

Should I hire a trademark attorney to register my trademark?

When you hire a trademark attorney, most will conduct a comprehensive trademark searches and opinion letters

Most attorneys that you hire will perform a comprehensive search. A comprehensive trademark search is a search that is conducted by a company that has access to federal and state databases, secretary of state databases, domains, and social media. When a comprehensive search is conducted, you’ll receive a report with names and rankings of similarity. An attorney will analyze the results and determine the risk of the trademark. She or he will let you know the likelihood that your trademark will receive registration. That means you aren’t wasting time or money on a mark that’s already taken. Additionally, you’re not putting yourself at risk by being sued by a registered TM owner. When you hire a trademark attorney, you’ll receive a recommendation from an authority that you can trust.

You’re hiring an attorney whose focus is on trademark law

I don’t remember where I saw this but, would you hire an orthopedic surgeon to do heart surgery? No. The concept is the same when hiring an attorney for your legal issues. Most TM attorneys exclusively practice trademark law and have the education and skills so that you can rely on them. Most people believe companies like Legal Zoom who charge much lower prices can handle their TM issues. However, they are not practicing attorneys. Don’t believe me? Here ya go. hire a trademark attorney This is directly from their website. If you have a trademark that has complications, they are likely not going to be able to help you.

Applications that are filed by attorneys are 50% more likely to be successful than ones that aren’t filed by attorney

I love statistics and believe that they really put things into perspective. When you hire a trademark attorney, you’re increasing your likelihood of approval. Most people are risk averse and don’t want to take the chance of rejection. Not only that, you are wasting money if you try to do it yourself and receive a rejection. It’s best to do it right the first time, because if you don’t, you still have to hire someone to fix it. In most cases, it costs more to fix it than to do it right the first time around. Attorneys have strategies that they utilize so that your trademark has the best chance of approval. Unlike business consultants who state they can file your trademark for you (btw that’s illegal and your application could be void if caught), attorneys understand the law and have a good take on whether or not your mark will be successful.

83% of applications received an initial rejection letter

Read that again. 83% OF APPLICATIONS ARE REJECTED INITIALLY. Many times these rejection letters are avoidable because they are preventable.  Some reasons include: similar trademark (that’s why attorneys do comprehensive searches), descriptive (an attorney can usually tell right off the bat), or an incorrect specimen (an attorney will give you the guidelines or grab your specimen for you). If you have no idea how to respond to this rejection letter, then you’ll have to hire an attorney anyway. Once again, that’s more money that has to come out of your pocket anyway. Now that you have a better understanding of why you need to hire a trademark attorney, you can make a better decision on whether or not you’re ready to move forward with the process. If you’d like a better understanding of the trademark process, don’t forget to grab The Trademark Roadmap below.

Difference between registered and unregistered trademarks

Difference between registered and unregistered trademarks

You heard a lot of things about the importance of registered trademark and own your trademark but you’re not sure what the registered and unregistered trademark means. Well today that’s what we’re going to talk about and by the end of this video you’re going to be clear about the difference between registered and unregistered trademarks. My name is Michelle Murphy, I’m the owner Wilson Murphy Law and I work with small business owners to protect their business through trademark registration and contracts. Before we get started make sure you like or dislike, comment, and subscribe to my channel.

Trademark symbol differences:

There are different symbols for registered and unregistered trademarks. Registered trademark defines that the symbol has R with the circle around it.

And if your trademark is not registered then you use the TM symbol. If it can be shown that that you use the registered trademark symbol to deceive consumers or competitors then the United States Patent and Trademark Office (USPTO) will reject your application.

If it can be shown that that you use the registered trademark symbol to deceive consumers or competitors then the United States Patent and Trademark Office (USPTO) will reject your application. Click To Tweet

Benefits of using registered trademarks:

Sue for trademark Infringement:

The main benefit of having a registered trademark is that if a competitor or someone else infringes on your trademark then you can sue them in federal court and potentially recovers damages incurred due to an infringement a.k.a. compensation from the infringer.There are common law trademark rights but that only applies in the geographic region that you are in. So if you live in Nevada and someone in New York infringes on your trademark then you have no recourse.

Ownership Of trademark:

The benefit of a registered trademark compared to an unregistered trademark is the presumption that you own the trademark. If you did not register your trademark then you have to prove that your business was the first one using the trademark. When you sue someone for trademark infringement you must prove that you were using the trademark first and that the infringer’s use of the trademark causes confusion to consumers.

So those are just some differences between registered and unregistered trademarks. If you want to know a little bit more about trademarks, make sure you sign up below to get the trademark process roadmap.

What to include in your terms and conditions

What to include in your terms and conditions

Do you ever wonder why the heck you have a terms and conditions page on your website? Do you know what to include in your terms and conditions? Well, let’s chat about that today. I think it’s so important when it comes to the legal part of your business to know why you need to do certain things and not just blindly doing it because someone said so. 

Terms and conditions (or Terms of Service) is an agreement that you put on your website that your visitors know how to behave when they are visiting your site. By setting out these expectations, it is easier to defend your right as the owner not allowing them on your website. Expectations are so much easier if you have a list telling someone what to do. If a visitor does violate your terms and service, you can ban them from your website or even sue them if it’s detrimental. Now that you know what terms and conditions are for, let’s get into what to include in your terms and conditions. 

Refund policy

If you sell services or goods, then you need to have a refund policy. Your refund policy needs to be consistent across the board. If your refund policy isn’t consistent, then any chargeback will likely err on the side of the purchaser. Do you want to lose thousand dollar chargebacks? I didn’t think so. By having a refund policy, the purchaser agrees to how you handle refunds, and it’s harder to argue against it. Also, I recommend that you add refund policies to the pages of your products/services. Your refund policy should include the following: 

  • The numbers of days a customer has to return a product
  • What kind of refund you will give to the customer after they return an item
  • Who will pay for the return? If you sell digital products, whether you accept refunds, and if so, in what cases. 

Intellectual property

Not sure what intellectual property is? Intellectual property is a work or invention that is the result of creativity. Intellectual property includes copyrights, trademarks, patents, and trade secrets. The content you produce on your website is copyrighted material. The name of your website and any courses you create are trademarks. The ultimate protection you get is by registering your intellectual property with the right federal agency. By including how people can use your intellectual property, it will keep visitors clear about whether or not they can share your content. Some people don’t want to share any of their blog content, but there are other websites like BuzzFeed who encourage their visitors to share. 

Also, if you register your trademarks, you must defend them, or you’ll dilute your brand and will no longer have the same type of protection. If you aren’t protecting your intellectual property, then it’s hard for people to distinguish you from the millions out there. So if someone violates your terms regarding your intellectual property, you should include the consequences, such as deactivating their account or sue them for damages.

Limitation of liability

A limitation of liability clause limits the amount and types of damages one party can recover from the other party. You can’t put a financial cap on death or personal injury arising out of negligence or fraud or fraudulent misrepresentation. You must follow the state’s laws, and the limitation must be reasonable, clear, and conspicuous. If your limitation is confusing or contradictory, the court will construe it in favor of the client/customer.  

Termination

Because your website is yours, you can stop people from coming to it, if they don’t abide by your terms and conditions. When you have a termination clause, you can tell your visitors the expectations you have from them when they visit your site. If a visitor can’t follow this, then you are allowed to terminate use. Termination is especially useful for those who have memberships and subscriptions. Most termination clauses contain two standard points: 

1. If you violate the terms and conditions, the owner can revoke access;

 And 2. The business is allowed to terminate for any reason at the discretion of the business. 

Some things that businesses include for grounds for termination are stealing your intellectual property, making disparaging comments, and not paying the fee if it’s a membership or subscription service. 

Incorporate your privacy policy

By incorporating your privacy policy by reference, your visitor agrees to follow your terms and conditions AND privacy policy. It’s a 2 for 1, and who doesn’t love that? 

Example: Our Privacy Policy incorporated by reference into these Terms and Conditions.

Bonus: Include a clickwrap so that your visitor has to expressly agree to your terms. I’m still trying to figure out how to add a clickwrap pop up without a ton of pop-ups on my page. But in short, a clickwrap is a pop up that says, “I agree.” It is a legally secure and easy way of creating binding agreements with your visitors online. There are a few legal cases that discuss clickwrap.

Now that you know, are you going to include these sections in your terms and conditions? Do you have terms and conditions on your website at all? If you don’t, you can grab it from my contract template shop. It takes about 15-20 minutes to fill in, and costs 1/2 the price of hiring an attorney.

When Should Your Small Business Register its Trademark?

When Should Your Small Business Register its Trademark?

This question gets asked to me time and time again. When should my small business register its trademark? And I’ll give you the lawyerly answer, which is, it depends. I’ve recommended many of my clients to wait, but I’ve also recommended clients to start before their business even opens. If you aren’t sure if it’s time to register your trademark, use the following factors below, and see if any of them applies to you. 

You’ve chosen a name that you don’t want anyone else to have

I have seen it so many times. Someone comes up with a name that they worked really hard to create, and soon enough, someone else starts using it. Now they’re trying to trademark it, and you have to battle over the name. If you had registered the trademark, you would already have the exclusive rights. Thus, the other company would have to choose another name. So if you are totally in love with a name and you CANNOT let it go, then do a search on Google and social media to make sure that name hasn’t already been taken. If it hasn’t been taken or you don’t think it’s been taken, then you can move forward to the next steps to register your trademark.

Your name is in the media

If you or your business has gone viral, then it’s time to move forward with the trademark process. As much as I deplore the family, the Kardashians do this ALL THE TIME. If anything they do goes viral, they try to cash in so that other people can’t use their trademarks for monetary gain. Registering your trademark takes about a year, so it’s definitely not something that happens overnight. But people are waiting on the sidelines to cash in. I covered a story on Instagram about Meg Thee Stallion trademarking “Hot Girl Summer,” but there was already someone who filed first. So now Meg Thee Stallion has to wait in line for her application to hit the trademark examiner’s desk. It sucks, but that’s how it goes in the trademark streets. Going viral happens in a snap second, so you want to be ready to file when it does. 

Your business is sustaining itself

Many people don’t want to invest in their trademarks when they first open their business. The most common factors are not sure about keeping the name or your small business is unable to afford to register your trademark. If you don’t even know if you are going to keep the same name, why invest if you’ll have to pay for the new trademark? But the more common reason is that most small businesses can’t afford to trademark when they first open up shop. However, if you are consistently turning a profit that is actually sustaining your business, then it’s time to start looking into the trademark process. This means that people are actually buying from you. When your business is sustaining itself, more than likely, more companies are going to want to work with you. These companies are using you for your brand reputation. When your small business registers its  trademark, these companies are going to take you more seriously and are more willing to invest in any collaborations that you do. 

I believe that everyone should start looking into trademarking sooner rather than later. Even if you don’t register immediately, you will have some knowledge of how the process works and the costs. At that point, you can build a plan around it.

If you are ready to start the trademark process, use the form below. Wilson Murphy Law will be in touch shortly after.