Your business is growing and you’ve been hearing the buzz about registering a trademark all over entertainment blogs.
You also know people who have had their trademarks stolen and it’s something that lingers in the back of your mind. Some days you think, “That’s never going to happen to me”, and then you go in your Facebook Group and see that it happened to one of your cohorts.
In this post, we are discussing why it is so important for to register a trademark for your business’s name because many times it’s put on the back burner. There are many benefits that business owners don’t realize they receive after registration. Business owners know how important the legal aspects are, but don’t know where to start or how to grow their business.
But today, you’ll find that the sooner you file your application, the better so you can take advantage of these benefits.
1. You have ownership rights
This is THE #1 reason to register a trademark. Having ownership rights means that you actually own the name (in the case of word marks) in association with the product or service that you sell. Being the owner of a registered trademark allows you to enforce your mark against any infringers (see more about this below).
You also know that when you trademark a business name, it is officially yours and that you aren’t infringing on someone else’s mark. Building a brand on a name that belongs to someone is costly. It can result in shutting down your business, excess attorney fees to defend a lawsuit, and damages because the other party will take action if you get caught.
2. Use of the (R) symbol
The registered symbol informs everyone that your mark is registered and that you are ready to defend it against infringers. When you use the registered symbol, you are claiming rights as the owner of the trademark. The registered symbol can be used whether you’re on the principal or supplemental register.
You are only allowed to use the registered symbol after the TM Office approves your TM. If you use the registered symbol before approval then your application is in danger of denial because it is illegal to use that mark if your mark is not registered.
3. When you register your trademark, you have the ability to sue infringers in Federal Court
Once you register a trademark, it is your duty and responsibility to defend it. If you are not defending your mark, you are risking dilution. If your trademark becomes diluted, it does not have the same type of protection as it does when you first registered your trademark. In a nutshell, dilution occurs when someone uses a famous mark in a manner that blurs or tarnishes the mark. The easiest way to ensure that no is infringing on your mark is to monitor your trademarks (link).
When you decide to sue your infringers, the Federal Court presumes that you own the mark, if registered. This means that you have less to prove in court. If you win your case, then you can be awarded the following:
Court order (injunction) that the defendant stop using the accused mark;
An order requiring the destruction or forfeiture of infringing articles;
Monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and
An order that the defendant, in certain cases, pay the plaintiffs’ attorneys’ fees.
4. When you register a trademark, you own a valuable asset
Trademarks are one of the most valuable assets of your business. As you continue to grow, your trademark gains value. Brands like Apple, Coca Cola, Google, and Netflix have brands valued in the BILLIONS due to the brand recognition they’ve acquired. Once your brand is earning more and more recognition, other companies are going to notice you.
You can license your mark to another company to use for collaborations. A license is when you allow another company or person to use your trademark to make products or conduct services under a trademark licensing agreement.
Another way that you can use your trademark is to sell it. There are plenty of companies looking to acquire names that they love and have built their brand on, but you have the trademark. If you are no longer using the mark and have no plans on using it, you can sell and assign the mark over to that company. In the end, either of these strategies means money for your company. When you invest in your trademark, there’s many things you can do so that it earns money for you.
5. Use it for foreign trademark filing
Remember that filing your trademark in the USA only gives you exclusive rights in the 50 states of the USA. But you can file your trademark in other countries which many companies do for strategic reasons before they even file in the US, but that’s another story.
If you have your US trademark registration, you can use your US trademark registration as a basis for filing in another country. The Madrid Protocol allows you to seek registration in any of the countries that have joined the Madrid Protocol. You can file a single application, called an “international application,” with the International Bureau of the World Property Intellectual Organization (WIPO), through the USPTO.
Final thoughts on the benefits of registering a trademark for your business
There you have it, the 5 reasons that you need to register a trademark. If you have a name that you want to trademark, but aren’t sure that it’s up to par, then snag the trademark freebie below. It’s a guide that helps you understand the trademark process and mistakes to avoid when picking a name and filing an application.
It was only a matter of time before Cardi would try to trademark her signature slogan “Okurrr”. Cardi decided to file an application to register her trademark in association with paper cups, posters, and clothing, according to Page Six. We all know Cardi is about making money, as she has told fans to Google ways to become a millionaire.
1. Deter copiers
Have you ever walked into a boutique or a nail spa, and you knew they meant business? Yea, I know we all know the saying, don’t judge a book by it’s cover. But there are just some things that make you look professional and like you are running s*it. That’s what the ® symbol looks like to your customers and competitors. They see it like you have taken your brand to the next level by registering it with the United States federal government. This in turn may shy away a person or company who wants to use your name or logo or any other trademark within your business to get customers.
There’s so much thievery nowadays, even by big brands who think that because they have the money they can get away with anything. *Ahem, I’m looking at you Forever 21, Urban Outfitters, the Kardashians, and a ton of the big luxury fashion brands*. But if you have a registered trademark, there’s a better chance that a person or company would not want to fight in court. And this is a great way to segway into point #2.
2. Sue infringers in Federal Court
The only way you can sue in Federal Court is if you register your trademark. There is some common law trademark protections but honestly, it doesn’t do much if someone in Texas tries to infringe on your trademark. That’s because common law trademark only covers you in your immediate geographic location. If you file and register your trademark, the court presumes that you are the owner of the trademark from the outset. You may also be granted actual costs from having to file a lawsuit, attorney’s fees, and statutory damages up to $200,000.00.
3. Professional and trustworthy
By filing a trademark and using the ® symbol, there is a level of professionalism that people see, like I said above. People think that if you have registered your trademark, that your trademark carries value. And that you are a brand that will continually grow in size and money.
If you file a trademark registration application, you will be able to send a cease and desist letter. The letter may have more impact, because they are likely to take it more serious. And you may be able to get them to stop their behavior without resorting to filing a lawsuit because they know you are the one that owns that trademark.
5. Protection from US Customs if someone tries to import products using your trademark
Lastly, if you sell products and you registered your trademark, the products with your trademark will be stopped by US Custom and Border Protection. The products will be seized and destroyed if someone is infringing on your trademark.
These are all really good reasons to think about filing a trademark application. If you want to learn more about the trademark process at Wilson Murphy Law, you can find the information here.
Want to talk about your trademark? Fill out the information below and see if Wilson Murphy Law can help.
Do you have some cool branded components to your business and wonder “Can I trademark that?”. Most people are under the impression that everything can be trademarked. But, the United States Patent and Trademark Office (USPTO) have rules about trademarks they allow. This guide will take you through what the USPTO accepts as a trademark. If you need a refresher on what a trademark is, check out this post.
Now… let’s get started on this fascinating topic, shall we?
1. Name and Business Names
So, of course we know that your business name can be trademarked, if you are using the name to sell goods or services. But you can also trademark your name if you are using your name to sell goods or services.
For example, Kylie Minogue and Kylie Jenner battled over the trademark Kylie. Kylie Minogue won that battle because her fans know her by Kylie. Kylie Minogue’s fans have identified her as Kylie before Kylie Jenner was born. Minogue’s lawyers believed that if the USPTO granted Kylie Jenner the trademark, “it would violate and diminish the prior and superior rights” of the singer and likely create “confusion resulting in damage and injury” to her.
A lot of people’s fave artist, Beyonce, is an ongoing battle to trademark her daughter, Blue Ivy’s name. You may think that just because Blue Ivy is somewhat of a celebrity, that’s enough to trademark her name. WRONG! Beyonce registered Blue Ivy’s name under a trademark class to sell baby goods. A trademark class is a category that you sell your goods or services under. In 2017, an event planning company named Blue Ivy opposed the name and there has not been a resolution yet.
A popular influencer whose name is trademarked? Carli Bybel- beauty influencer
The takeaway from this is that you have to be selling goods or services, if you are going to try to trademark your name. Also, the USPTO will not allow you to trademark only your last name to preserve it, generally. If the last name acquires a secondary meaning through use, the USPTO may allow you to trademark the name.
2. You can trademark slogans.
Does “Just Do It” sound familiar to anyone? Yes, you can trademark your slogan. But it must correspond to a good or service that you are selling (shocking, i know!) So if you use your slogan for an advertising campaign or on your products, then it is trademarkable (maybe a word? Idk). But sometimes your slogan has to acquire a secondary meaning. That means that when someone sees or says your slogan, that your product or service comes to mind. This is likely how Nike’s slogan became a trademark.
3. Domain name
Ah, domain names. I don’t know if you guys realize it, but the law drags its feet when it comes to catching up with technology. Hello… Reno, Nevada still outlawed sex toys until 2009. Nevada of all places *rolls eyes*. Anyway back to domain names. A domain name can be trademarked if it is used in connection with a website to sell goods or a service. A good example of a domain that has been trademarked is godaddy.com. I want to discuss some important aspects of domain names and trademarks to keep you outta trouble.
NUMBER ONE: Just because you have a domain name, does not mean you have a trademark.
NUMBER TWO: Buying a domain name without doing your research, may result in trademark infringement. if that name is a registered trademark.
So make sure you do your research before choosing a domain name because you may lose it. All that marketing and all that traffic you’ve drummed up could vanish in a snap. You’ve worked too hard for that! So take a little bit of time in the beginning to dig and snoop around when choosing a domain name. Pretend it’s like you’re checking up on someone who you don’t care about…but maybe care about a little…you know… just to see what they’re up to it.
Ah… the logo. The drawing that you’ve spent $2,000+ on to create and what everyone thinks of when they think of a trademark. Your logo becomes a trademark when you use it to sell goods or services. But just having it on a shirt or mug does not make it a trademark. The logo needs to be on your packaging, if you sell goods. If you are a service based business, the logo on your advertisement or webpage is enough.
Some familiar logos, you may wonder? The golden arches (Mcdonald’s), the red bullseye (Target), and the swoosh (Nike).
4 words…the little blue box. What comes to mind? Good ol’ Tiffany & Co. The USPTO will register colors as long as the colors area a recognizable component to your brand. Colors usually need to acquire secondary meaning to be registered with the USPTO. That means that over time people associate the color with your brand. If you try to register red, and you’ve only been in business for 6 months, the USPTO will likely deny it. But over time, you will have a better chance of registering that red color. And no, I don’t have an exact time because it’s under the USPTO’s discretion.
I am one of those people that loves to know random facts. So much so, that my husband calls me a person who knows stupid knowledge. Whether you know it or not, Coca Cola has trademarked their packaging. The USPTO will register packaging if its distinctive or has gained secondary meaning. Product packaging must also be nonfunctional to be protectable. This means that your packaging doesn’t serve a particular purpose. The packaging must be something that sets your goods apart, such as a skull shaped vodka bottle. The skull shape doesn’t serve a particular purpose. But, it is distinctive from other vodka bottles and how a consumer recognizes the brand.
7. Did you know you can trademark sounds?
Did you know that some of the sounds that you hear everyday are trademarked? This includes the NBC chimes, the MGM lions roaring, and the Mr. Softee ice cream truck song. How many of you guys remember the ice cream trucks in your neighborhood? It’s what childhood dreams are made of *sniff sniff*. The chimes, the lions, and the jingle of the ice cream truck are all sounds that function on how you recognize these brands. Remember, any old sound can’t be trademarked. The sound has to serve as a way for consumers to identify your brand.
8. What about #hashtags?
Remember what I said in #3, about how the law is late to catch up on technology? Well, they may have redeemed themselves by including hashtags into the trademark world. The USPTO states that, “A mark comprising of or including the hash symbol (#) or the term ‘hashtag’ is registerable as a trademark of service only if it functions as an identifier of the source of the applicant’s goods or services.” Back in 2016, the number of hashtag trademark applications had increased 64% in one year. That was 3 years ago, so I can only imagine that the number has increased. Many companies use their hashtags to find influencers and to engage with consumers. So it only makes sense that they would want to trademark their unique hashtag. Remember, if you want to trademark a hashtag, it still has to be distinctive and will not cause confusion among consumers.
P.S. Sticking a hashtag in front of a name, does not remove the likelihood of confusion element.
I hope this has helped you out while you are on your trademarking journey. Trademarking is never-ending because as time changes, so does the law. If choosing the right name to trademark is leaving you stumped, use this guide so that you can choose a name that’s memorable to your office and passes the Trademark Office standards.
I will be doing a monthly round up of legal news that pertains to my practice areas. This month I focused on trademark news, because it’s a little bit more entertaining and relateable. These articles are all pretty easy reads and shouldn’t take longer than 5 minutes to digest. Enjoy!
1. Pooey Puitton (MGA Entertainment vs. Louis Vuitton), check out my blog post that discusses how this company may be able to win their lawsuit with LV over their parody toy.
2. McDonald’s loses its Big Mac trademark in EU. See how and why McDonalds lost it’s trademark for the Big Mac in the EU. This is kind of a big deal.
3. Netflix is being sued over the choose your own fate movie, Black Mirror: Bandersnatch. I was an avid reader as a child and I used to love the “choose your own adventure” books. Well, the publishers of those books are suing Netflix for trademark infringement. Read the article here.
4. Rihanna suing father over Fenty trademark. This article discusses why you can’t just go around using someone’s trademark all willy nilly, even if you have the same last name and are related.
Registering and maintaining a trademark is expensive, and you don’t want to lose your trademark over something that is preventable. Keeping your brand reputable is time consuming and, also expensive. You are putting time and money into your brand, and these three mistakes may cause you to lose your trademark.
1. You can lose your trademark if your non registered trademark is similar to a federally registered trademark.
If you have a non registered trademark and you are, say a little cupcake shop in Michigan, and you only plan to sell cupcakes in your city in Michigan, then you probably don’t have to register your trademark. But, if you want to sell your cupcakes nationally, and federally register your trademark, you’ll have to make sure that another company has not already used your trademark or something similar. Otherwise, you may lose your trademark.
If you want to learn the basics of a trademark and the benefits of registering your trademark, check out this post.
2.You can lose your trademark if you think that you have a trademark because you registered a domain name with a hosting service.
Just because you have a domain name does not mean that you have a trademark. Not only that, but if someone who holds the trademark that is similar or the same as your domain name may sue you for trademark infringement. If the trademark owner wins, then you’ll likely have to relinquish that domain name.
3.You can lose your trademark if you abandon the trademark, knowingly or unknowingly.
According to §15 USC 1127, you have “abandoned” your mark if:
(a) You have stopped using the mark and there is no intention to USE the trademark again. “Use” of a mark means you are using the mark to sell goods/services. You are not “using” a mark, if you are merely reserving the mark. If you don’t use the trademark for 3 consecutive years, there is a presumption of abandonment. The USPTO or federal judges will infer the intent not to resume under certain circumstances
(b) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. For example, if the inventor of the vacuum trademarked “vacuum”, and the owner of the vacuum trademark did not do anything to keep this trademark from being generally associated with a machine that sucks up dirt. Since the owner did not stop his invention from becoming a generic term, the USPTO will likely no longer protect it under the Federal Lanham Act.
If you need help with registering your federal trademark, you can schedule a Clarity Call today.
Does the little bag on the right resemble a certain luxury brand’s monogram? Well this is “Pooey Puitton”, which is a toy manufactured by MGA Entertainment. This little toy is a carrier that holds unicorn slime and it was a hot holiday toy this year. On December 4, 2018, MGA Entertainment filed a suit in federal court in Los Angeles. According to The Fashion Law Blog, MGA Entertainment alleged that, “On or around December 7, 2018, Louis Vuitton claimed to one of MGA’s customers that the Pooey name and Pooey product infringed upon or diluted one or more of Louis Vuitton trademarks”.
MGA Entertainment decided to beat Louis Vuitton to the punch on filing suit before Louis Vuitton could allege trademark infringement. Claiming a parody defense, MGA Entertainment states that the toy is “designed to mock, criticize, and make fun of that wealth and celebrity”. Also, according to the complaint,“The use of the Pooey name and Pooey product in association with a product line of ‘magical unicorn poop’ is intended to criticize or comment upon the rich and famous, the Louis Vuitton name, the LV marks, and on their conspicuous consumption.”
In 2005, MGA Entertainment sued Mattel over the popular Bratz dolls and Mattel countersued. Mattel ultimately lost. The court found that Mattel misappropriated trade secrets from MGA Entertainment and awarded MGA $88.5 million in damages.
Since this just happened, I’m sure there won’t be a resolution of this case for years from now. But do you think MGA has a valid defense over Pooey Puitton?
If you want to learn a little bit more about trademarks and how to avoid a denial from the US Patent and Trademark Office, I have afree checklist you can use when you are deciding on your trademark.