This would qualify as happy news for me and a quick lesson for you, who is perhaps a Thriving Practitioner or other business person. After about 2 years my application for a Registered Trademark has finally been accepted by the US Patents and Trademark Office (USPTO). I get to use the ®! Well….after my graphic designer comes up for some air and can add it, but it’s now legal. How is this important? Keeping in mind that I’m not an attorney but rather, like you, I am looking to move forward here’s what I’ve learned in the past several years about trademarks.
Have you ever had that experience of seeing something in production or on Shark Tank and thinking to yourself, “but that’s my idea!” Nope, not yours unless you got to the USPTO first. You don’t have to register your trademark (otherwise known as a mark) but as one writer put it, “So why haven’t you filed for a federal registration with the U.S. Patent and Trademark Office? Are you just waiting to get into a trademark battle without the assistance of a federal registration for your trademark? If so, allow me to paraphrase Sean Connery from the Untouchables–that’s like taking a knife to a gun fight.” (Matthew Swyers, “3 Reasons to Protect Your Trademarks Now”, inc.com).
Our ideas and trademarks (which many of us would consider our logo or those graphics we use to identify ourselves) are great and wonderful as well as a method for people to find us with. People may forget the name but in all likelihood will recognize the graphic; think the Nike swish or the AT&T ribbon globe. Its also useful on social media if you’re doing social media.
The USPTO gives us some great reasoning for filing: “…owning a federal trademark registration on the Principal Register provides several advantages, e.g., constructive notice to the public of the registrant’s claim of ownership of the mark;
* constructive notice to the public of the registrant’s claim of ownership of the mark;
* a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
* the ability to bring an action concerning the mark in federal court;
* the use of the U.S registration as a basis to obtain registration in foreign countries; and
* the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.”
Protection is usually a good thing and it might be worth your time to investigate further if this is something you think might be useful to you. There are lots of intellectual property attorneys out there who would be happy to help you do this. Although I found 2 references discussing how filing registration for a mark is “a bargain to obtain” this might not always be the case. If you go with an attorney (and I’m glad I did!) they walk you through the parts you need to do and manage the parts you might not know how to do. You won’t have the benefit of the wisdom an experienced guide brings to the process if you do it on your own. Mind you this is coming from someone who relied on the assistance of the nice people at the Department of State (NY) to file her own P.C. and LLC – I’m all about DIY when possible!
Another advantage is that a mark is an asset. Assets have value. Value is good. Does more need to be said?
I’ve discussed in the past about how great my office suite mates are and this is one of those times when having cross pollination of ideas, professions and perspectives enriched my day. Having heard Carol Desmond (with Gonzalez and Oberlander) talk about her work as an Intellectual Property Specialist over lunch for a number of years I was able to go into this journey with a good understanding of the value of registering a mark; Carol and Andy Gonzalaz made the process as smooth as possible. Thanks Carol and Andy!
Don’t think you’ll ever get a mark? That’s OK! Next time you see one you can now know how much thought and work went into getting that nifty little ‘circle R’ after someone’s logo!