Is Trademarking Your Business the Right Move?

A trademark protects your brand name or logo, builds brand recognition, and enhances your reputation. Business owners may wonder whether a trademark is necessary, given the time, effort, and costs involved. There are many factors to consider, including the benefits, limitations, and the actual process of applying for, maintaining, and enforcing your trademark.

Trademark benefits

• Trademarking your business provides nationwide trademark protection.
• You can enforce your trademark in court against infringement.
• Brand recognition.
• Use of the “®” registered trademark symbol.

Trademark limits

• The process of applying is time-consuming.
• The enforcement of the trademark falls on you to monitor the use of your mark and to enforce your mark against infringement by others.

Process of applying

The application process is often time-consuming. It begins with (1) a search for similar marks, which searches for existing trademarks in the United States Patent and Trademark Office (USPTO) database. An attorney may be able to perform a more comprehensive search, provide advice, and identify any potential issues at this stage.

Next, (2) the application must be prepared and submitted. The application will describe the product(s) or service(s) that the mark will cover, the class it falls into, and its filing basis. The application will then be filed with the USPTO, and (3) a USPTO examining attorney will be assigned. The examining attorney may issue objections in the form of Office Actions, which must be responded to in a timely manner. Finally, (4) the application will be approved or denied by the USPTO examining attorney.

Upon approval, your trademark must be registered, maintained, and enforced. The USPTO does not protect your trademark; the effort of enforcing your mark will fall upon your business.

The necessity of a trademark

Various considerations arise when planning your trademark. Small or local businesses may view trademarking differently than larger or national businesses; the time, effort, and cost required may be prohibitive for small businesses, especially in the early stages. However, businesses should consider their potential for growth and their long-term goals, as these may influence whether a trademark is necessary for the growth and national recognition of their brand.

The process of trademarking your mark is complex and time-consuming, and includes the preparation of the trademark application, working with an assigned USPTO examining attorney, responding to office actions, and more. After trademarking, it is essential to register, renew, and maintain your mark, in addition to enforcing your mark against infringement by others.

This process is complex and best navigated with an attorney’s assistance. Contact attorney Leiona Noah for expert guidance to protect your brand and ensure your trademark is secured properly.

Makayla Newman is a law clerk at Kates Nussman Ellis Farhi & Earle. She is a second-year law student at Rutgers Law School in Camden, NJ where she is an Associate Editor for the Women’s Rights Law Reporter.