Trademark law is pretty convoluted these days, which makes it hard to know where to start thinking about protection and registration. Without getting too complicated, I’d like to explain the three ways you can protect your trademarks (which can include all kinds of things).
This may go without saying, but one of the best things you can do before going down any path is to talk to a trademark lawyer. Yeah, it’ll cost you, but that person can help you avoid some costly mistakes. The information here can help you have a more informed conversation.
The three ways a trademark can be protected or registered in the United States are: common law, state law and registration, and federal law and registration. I’ll talk about each one down below, bu I’m not going to cover international trademark options here.
Common Law Trademark Protection
Common law trademark protection happens automatically. Once you begin using a trademark that meets all of the basic requirements, you start to obtain something called “common law” trademark protection in the specific geographic location(s) where you are selling your products and/or offering them for sale.
If you’re selling products on one block in Brooklyn, your common law trademark protection starts to form in and around that block (this is kind of a fluffy standard).
You don’t have to do anything else – there’s no registration process for common law trademarks (meaning, its free!). The danger, of course, is that your protection is limited to that area. If someone in Staten Island, New Jersey, or New Mexico wants to use exactly the same trademark on exactly the same products or services, they can probably do that. The internet makes this a little bit more complicated, but the law is clear as mud on this point.
You can use the ™ symbol on your common law trademark – this communicates to others that you are staking your claim to it. There aren’t any restrictions on how you physically use it. Most of the time, however, it is located in the upper right hand corner, lower right hand corner, or level with the trademark. Using ™ doesn’t guarantee that your trademark is protected, but it provides a starting point to convey your intentions.
State Trademark Protection and Registration
You can also apply for trademark protection in your specific state.
Please keep in mind that if you go this route, you are only protected in the state where the application was approved. The application fee for a state trademark is usually a lot less expensive than the federal trademark application fee.
Federal Trademark Protection and Registration
Finally, federal trademark applications are filed with the United States Patent and Trademark Office (USPTO). If you are successful in your application, your trademark will be protected nationwide. This is what most people think of when they hear anything about filing a trademark application.
The federal application process is more involved than the state process, which also makes it more expensive and time consuming. A licensed attorney can assist you with filing a federal trademark application, regardless of geographical location. If you use an attorney, make sure that person understands trademark law–this should be obvious, but I’ve seen some stuff, ya’ll….
You can also file the application yourself. Warning–the application process is deceivingly complicated. If you go this route, I’d highly recommend the NOLO Trademark book. It walks you step by step through the entire thing.
Once your mark is registered with the USPTO, you can stop using ™ and now use the ® symbol.
You may need to use one or more of these options at different stages in your business–they can be used separately or together. If you start with a federal trademark registration, though, you do not need a state-based application (because the federal registration applies in all 50 states).
Are there any traditional or non-traditional trademarks you need to protect in your own business? Check out our free e-book on protecting your brand, which can help you identify possible trademarks.