To protect a brand name, start with clearance before investing, choose a distinctive mark, assess an appropriate filing strategy, use the brand consistently, and track maintenance and potential conflicts. Federal registration can add legal tools; it does not prevent every infringement or protect an idea by itself.
- Choose and clear the proposed name or logo.
- Identify the owner and apply using a filing basis supported by the facts.
- Keep records of genuine use and maintain consistent brand presentation.
- Monitor relevant activity and review potential conflicts with counsel.
- Calendar registration-maintenance filings and reassess protection as the business changes.
See our brand-selection guide, application process, and guidance on preserving distinctiveness.
What Does a Trademark Protect?
When protecting your brand, there are several different ways to protect your intellectual property, including patents, trademarks, and copyrights. Trademarks and service marks can protect brand names and logos used on goods and services. Check out article on the differences between trademarks and service marks.
A trademark is a mark in the form of a word, phrase, symbol, design, or a combination of these things that identifies and distinguishes the source of certain goods from the goods of others. Service marks are the same as trademarks except that a service mark identifies and distinguishes the source of a service instead of goods. Read more about trademarks in our article on recognized trademarks.
The Benefits of Protecting your Brand with Trademarks
Trademark rights can arise through qualifying use without federal registration. Principal Register registration can add valuable statutory presumptions and nationwide benefits, subject to prior rights and other legal limits. Supplemental Register benefits differ. Registration supports enforcement; it does not automatically prevent copying or guarantee that every dispute can be won.
A registration may potentially last indefinitely with the required use and maintenance. For most domestic federal registrations, file a Section 8 declaration between the fifth and sixth years after registration, then a combined Sections 8 and 9 filing between the ninth and tenth years, and every ten years thereafter. Continued use or qualifying excusable nonuse and timely filings are essential. Madrid-based registrations have separate U.S. Section 71 and international-renewal requirements. USPTO maintenance requirements.
Protecting your Brand – Trade and Service Mark Registration
Registering a trade or service mark is a measure taken by many small business owners, entrepreneurs, and individuals because of the benefits it offers and the ease of doing so. You can actually register your own trade or service mark. Note that though it is possible to do without legal assistance, many choose to seek the help of an attorney regardless as the registration process is a legal proceeding that requires action in compliance with within certain deadlines.
Trade or service mark registration can be relatively straightforward. At Carson Patents, we recognized a four step process for seeking a trademark or service mark for your logo, brand, slogan, and/or business name. This process may differ a bit depending on whether the mark is registrable for the Principal Register or the Supplemental Register. To read more about the differences between the Principal and Supplemental Register, take a look at our article Registered Trademark: Principal Register vs Supplemental Register.
From Brand-Protection Planning to Trademark Registration
1. Research the mark. Use USPTO Trademark Search and relevant common-law research to assess similar marks and related goods or services. A WIPO database search is research, not an application for international protection.
2. Prepare the application. Identify the correct owner, mark, goods or services and filing basis. A Section 1(b) intent-to-use application allows filing before qualifying use begins when the applicant has a bona fide intention to use the mark in commerce. Proof of use is supplied later at the required stage; choosing this basis does not place a mark on the Supplemental Register.
3. File. Submit new applications through Trademark Center with the required statements, fees and evidence when applicable.
4. Address examination and later milestones. Respond on time to office actions, monitor publication and any opposition, satisfy use requirements when applicable, and calendar post-registration maintenance. See our four steps to trademark registration and office-action guide.