Common Trademark Mistakes Made by Small Business Owners

Common Trademark Mistakes Made by Small Business Owners

Common Trademark Mistakes Made by Small Business Owners

We all know how important it is to brand your business. The names, logos and symbols that identify the brand you use in marketing your products or services can be legally protected as trademarks. The information below will help you grow your business while you guard your brand.

Register your trademark at the federal level

Trademarks can be protected under both state and federal law. But it’s important to know the difference between the two systems.  

In most states you can easily register your trademark with an agency of the state government. However, state registration doesn’t guarantee that your rights will prevail over someone else who is using the same or similar trademark. State registration protects within the borders of the state. It does not offer you anything else, including the use of the federal trademark registration symbol.  

Federal trademark law by contrast can give you actual ownership of your brand. To secure a federal trademark you must apply to the United States Patent & Trademark Office (USPTO) for registration. The examiner will conduct a search of the federal trademark registry to determine whether there already is another registration that is the same or is confusingly similar to the trademark you are claiming.

Federal registration, under the Lanham Act, gives you protections throughout the entire United States, its territories, and possessions. It can also be used to file a registration in other countries and stop unauthorized imports at the U.S. border.

Obtaining a federal trademark may require a little more work, but the effort is worth the time. Be sure to check if a trademark has already been placed on your intellectual property before beginning the process. Federal registration has priority over a state trademark registration if the federal registration was obtained prior to the state registrant’s application date. If this happens, the federal registrant, can petition the court to cancel the state registration. Also, if you have a federally registered trademark you can challenge anyone else who tries to use the same mark for the same kind of product or service for infringement. 

Use your trademark

It only takes three years of non-use for a federally registered trademark to be considered abandoned. At that point that your trademark can be cancelled. But, unlike a copyright or patent, each of which have limited duration, a trademark can last forever as long as you keep it in use and continue to renew your license (every ten years). Failure to use it or not renew it will give reason for the courts to consider it abandoned.

Keep an eye on your trademark

The Courts care about the degree to which a trademark owner has policed their trademark. Actively managing trademarks to ensure they are publicly used in the way you intended is important. A trademark can be lost is due to people using the name as an ordinary verb or a noun in the generic sense of the term. Thermos, Aspirin, and Videotape are all examples of how a name can lose the legal protection of a trademark because the public started using their names in generic terms and no longer were identified with a particular product or service. That is why you will see a product like “Kleenex” ® always advertised with additional descriptive terms such as “Kleenex Facial Tissue.” Notice, the use of the symbol ® here as well. That also is a way of putting the public on notice that the word is a trademark and is not to be used as a common name for a type of product.

Failing to act

Under a legal concept known as “laches,” you can be barred from seeking recovery because of an undue delay in looking for relief. Once you are aware that someone is using your trademark, you need to act. Give the unauthorized user a notice to “cease and desist” using the mark and follow up with an infringement lawsuit if there is no compliance.

Don’t just take your friend’s word for it

Many well-intentioned friends are willing to offer you free advice. But that advice is usually based on their own personal experience. Chances are the information could be limited or outdated.  

Although it’s not required, hiring a private trademark attorney for legal advice and filing an application, can lead to the likelihood of success. A private trademark attorney may help you avoid many potential pitfalls. And that is where your friends advise will come in handy. Ask them who they used or where you can find a reputable attorney.  If your trademark is worth protecting, then it’s also worth the investment.

This article was originally written on November 7, 2018 and updated on July 18, 2022.

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