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Bees. Fedoras. Puns on sex ed. Must be another MoxieMark verse.
So you’ve launched your new brand/product/platform, and you’re interested in obtaining a registered federal trademark. That little ® is just so cute, it’s like a fedora for your logo and you just have to have it. Unfortunately, after digging around a bit you’ve discovered that you can’t just shopify a trademark. Registration is an investment in your business that requires time, money, and often times *gasp* working with an attorney. Is the cute little digital fedora worth it?
Simple answer for you gut-instincters: YES! If you like logic, keep reading.
Let’s talk about protection. Welcome to Trademark Ed.
In trademarking you’re protecting your idea. Your baby. The thing you spent days, nights, weeks, years developing. Having a registered trademark is a way to keep others from exploiting the goodwill you will build through marketing and customer satisfaction channels. (/ɡo͝odˈwil/ Noun. The customer recognition of your mark that gives you earning power over your competitors).
How does registration help in protecting your goodwill? Example time!
Say you’re a company in the business of selling scented beeswax candles. You’ve stumbled upon essentially a Banksy protégé – actually, it might be Banksy. Who is that guy, anyway? The design phenom has created the most awesome bee logo ever buzzed up for a mere 6-pack of PBR. (Definitely Banksy! Side note: always make sure you obtain assignment of copyright rights in your contracted designs.) Everyone is now buying your candles because they love the bee logo and know that this particular candle company produces fantastic scents. Then, in the town next over, another beekeeper decides to sell candles. They sell under a different name, but they BASICALLY STOLE YOUR BEE for their logo. Some of your customers that live in the town over start buying the bee-stealer’s products, mostly because they recognize the bee logo as the mark of a great candle company. What rights do you have to stop them?
(Oversimplification but useful for purposes of article alert.)
Well, without registering your trademark, you have what’s called common law rights. But this isn’t the best or most expansive type of rights to assert. You have a hard battle ahead, my friend, requiring evidence around superiority, famousness, etc. Very costly and time consuming. Worse yet, say the competitor is not in the town over, but in another state. To stop them invoking common law rights, you have to show you were selling in that other state first. Registration gives national protection. Common law gives only local protection.
And if you already registered your trademark? Well, go right ahead and sue them. Or at least have your lawyer send them much more effective nastygrams. Your registration gave you the presumption of ownership and validity—your candle competitor is going to have a hard time defeating your lawsuit. You could even triple your damages award for their intentional infringement.
Also, if you had a registered mark, it would show up on the U.S. trademark database. That could prevent the infringement before it even begins—being in the database is akin to claiming dibs (and your dibs spread across the U.S.). And if anyone tries to register a similar mark, the Patent and Trademark Office would cite your registration and stop them.
Another cool advantage in registration that makes it easier to protect your mark? Online platforms and social media sites (Google, Facebook, Amazon, etc.) are very helpful (cough: mandated) in preventing competitors from using their platforms to commit infringement. If you show these guys your registration, will at least help to curtail infringing use. You might even find that on some sites you are required to have a trademark to set up a seller account. How else can you fight infringement? Record your registration with U.S. Customs, and they’ll help prevent counterfeit goods from coming into the country. That’s a big helping hand!
Lastly, in pursuing registration you are engaging in an extra level of due diligence around your mark. You DO NOT want to be in a position of rebranding and killing your market because you never took the time on the front end to ensure that you were not infringing upon another company’s brand/product/platform.
About Lauren Hughes
Lauren Hughes is the privacy and branding lead at Rockridge Venture Law®. Equally adept at creative campaigns as well as technology transactions, Lauren leads clients through copyright, privacy, regulatory, and trademark considerations in optimizing successful e-commerce portfolios. She is a leading voice among women practicing in technology and tech law. Her primary practice areas include copyright and trademark law, data privacy, sports and entertainment law, and technology transactions. Lauren also leads the Knoxville Technology Council’s Women in Tech Committee, and is a Director of the Tennessee Women’s Theater Project. Read more about Lauren, connect with her, and Calendly her.
RVL® Articles by Lauren
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