If you are running a
Step 1: Choose a Strong Mark from the Start
A company’s trademark is often the first interaction a person has with the brand. A strong mark will both encourage brand recognition and protect against infringement. Therefore, the process to choose a strong trademark should be thoughtful and deliberate. Trademarks can be divided into the following categories, based on strength:
- Generic words depict a general product or service, and are too commonly used to be registered by the USPTO. An example of a generic
digital healthmark would be Health App.
- Descriptive marks “describe” a product or service. An example of this would be “Diabetes Tracker” for an app that tracks blood sugar and other diabetic symptoms. Descriptive trademarks receive very little protection because they are not truly unique marks.
- Suggestive marks simply hint at the product or service being offered. Fitbit would be considered a suggestive mark. While these marks may offer more protection, you could run into more trademark disputes, as others may choose similar suggestive language, like Fit Bot or Fit Band.
- Arbitrary marks are words that are commonly used, but not in conjunction with the goods or services offered. The prescription service Blink Health is an example of an arbitrary mark. While these marks are much stronger than the previous marks, they often require more marketing and consumer education about the goods or services being offered.
- Fanciful marks offer the strongest protection. These are invented terms with no relation to the product or service they represent. The diet app Noom is an example of a fanciful mark. Like arbitrary marks, these require more consumer education and marketing, but will establish stronger brand recognition.
Step 2: Conduct a Comprehensive Trademark Search
After a strong trademark has been chosen for your
To ensure that your trademark search reveals all potential concerns, it is best to work with an experienced trademark attorney. Most entrepreneurs in the
Step 3: Register Your Trademark with the USPTO
Once a comprehensive trademark search has been conducted, the next step in protecting your trademark is to register with the USPTO. While simply using your mark will provide some common law protections, they are extremely limited and may only apply to the small region where the business is located. For
As the owner of a
Step 4: Consider International Registration
Fortunately, the process to register a trademark internationally isn’t as difficult as you might think, especially once you’ve already filed with the USPTO. If you plan to register in only a few countries outside the U.S., you may want to file an application directly with each country’s trademark office. If your strategic plan includes multiple international registrations, you may might want to consider using the Madrid Protocol, an international treaty that allows you to complete a single application, and then apply it to more than 90 member countries. While the Madrid Protocol streamlines the application process, it does not guarantee approval. That decision is made on a country-by-country basis.
Step 5: Maintain Your Trademark Registration
In order to protect your registered trademark, you must actively police it. While the USPTO registers trademarks, it is important to note that they do not enforce the exclusivity of their use. That is the responsibility of the trademark owner. This can be a time-consuming task, but many trademark attorneys will provide monitoring services, and they will alert you to any possible infringement that may be detected. Your attorney will also assess the situation and determine how best to proceed. Often, a cease-and-desist letter is all that is needed to put an infringer on notice, however, in some cases, a more formal legal proceeding may be needed.
In addition to policing your mark, you must also maintain it through consistent use and renewal. Be sure to continue using the mark as it appears on your federal registration, and meet renewal deadlines set by the USPTO. For new trademark owners, your first renewal will need to be submitted between the fifth and sixth year of registration, and then again between the ninth and tenth year. After that, your trademark will need to be renewed every ten years. It is critical to be aware of these dates and to start the process to renew well before the deadline. Failure to renew in a timely manner could lead to the cancellation of the trademark.
There are many things to consider as you start your
This post has been sponsored by Gerben Law Firm PLLC
Josh Gerben is the founder of Gerben Law Firm, PLLC, a U.S based trademark law firm that has secured over 4,000 federal trademark registrations for clients since 2008. Trademark lawyer Josh Gerben has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more. As a business consultant and speaker, Josh also has a passion for helping other law firms start, manage, and grow their practice.