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Does your small business need trademarks?

Lately, I’ve been getting a lot of questions about trademarks so I thought I’d provide a few answers here just in case you have the same questions:

I’m just a small business why do I need a trademark?

Even though you may only be operating in a limited market or geographic area, the ever-shrinking global marketplace requires you to increase your vigilance in protecting your assets.  Rebranding is expensive and  can take a heavy toll on customer goodwill.  If you operate without protecting your company name you run the risk of having someone else register it.  Although if that happens, you, as the first user you might have some common-law limited right to use the name, the response and ensuing negotiations (and possible litigation) involved in establishing those rights will divert funds from your business operations and result in opportunity cost to you (you’ll spending time dealing with that instead of running your business).  For the relatively minimal cost of registering your company name, you can avoid a lot of potential hassle and cost later on.

What’s the difference between a trademark and a servicemark?Trademark Graphic

For all practical purpose, a name.  Trademarks relate to goods; servicemarks relate to services. The registration process is the same for both and registering either requires the same amount of distinctiveness. Both are commonly referenced using the ™ symbol (some folks use “sm” for servicemarks, but most don’t because of the entirely different connotation those initials invoke).  Once registered, you can use the ® symbol.

Doesn’t forming my company or registering it with the secretary of state protect my company name?

Unfortunately, no.  While the Secretary of State may ensure that you’re business name is not deceptively similar to that of an already-registered entity, trademark registration is an entirely separate process involving its own requirements and fees.  Additionally, unlike forming your entity, you have the option to register at the state or national level.

Do I have to register my name, my logo, or both?

It depends, most small businesses likely just need to register their company name.  But if you decide to register both, the registering body will evaluate your company name separately from your logo (so you’ll have to pay at least 2 filing fees).  Registering your company name (without any style treatment) will give you broad protection and will prevent others from using your name or a deceptively similar one in your market space.  Registering your logo, however, will only prevent someone from using a similar mark to your logo (think graphic treatment, color, font style, etc.) it will not protect your company name per se.  Also, anytime you change the logo (even if you use a different color) to protect that variation, you’d need to register it. For most startups and small businesses, its more cost effective to register just the company name in a nonstylized format.

Can I register a slogan?

Slogans are tricky. You can certainly apply to register one, but they are typically rejected for not being distinct enough or because companies fail to use them like trademarks. The USPTO will likely refuse to register any slogan that is merely displayed on the goods and not identified as the goods themselves (i.e. the slogan doesn’t have enough secondary meaning to transcend its words’ literal meaning).  But even if you cannot initially register your slogan on the primary registry because it lacks distinctiveness, you can register on the supplemental register and then, if after five years you maintain the usage to qualify for ‘acquired distinctiveness’, you can apply for primary registration.  As noted with logos above, registering a slogan may add cost for little benefit. I think one of the only reasons to do this is if it is critical to protect the slogan as a market identifier (such as the “Where’s the Beef” slogan Wendy’s used in the 1980s and recently revived as “Here’s the Beef”).

For more information, click here to visit more trademark FAQs on my website.

FOR TIPS ON HOW TO SELECT AN ATTORNEY, check out my PDF on how to select the right attorney for your business.

Texas Attorney Constance K. Hall

 Constance Hall, an experienced legal, marketing and client relationship professional, is licensed to  practice law in Texas.  For more information, if you have questions, or to contact Connie, email her at  info@mytxgc.com.

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