Should I Trademark My Business?

Probably, yes! But before elaborating, some fundamentals are in order.

What’s a trademark?

Most anything that identifies and distinguishes the source of goods of one party from those of others. Service provides get “service” marks, but I’m going to call them both trademarks.

Do I have to register my trademark?

No. Using the mark in commerce can establish rights, but registering your mark provides many important benefits, including:

Owning a federal trademark registration on the Principal Register provides several advantages, including:

• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ® and
• Listing in the United States Patent and Trademark Office’s online databases.

I think I have a trademark, but I haven’t registered it. Can I use the federal registration symbol “®”? 

No. You may use “TM” (trademark) or “SM” (service mark), but you only get the ® after the USPTO actually registers a mark.

Back to the real question: should I trademark my business name?

Let’s use a hypothetical. Fred’s company, FredCo, sells designer fire extinguishers. FredCo, which is currently selling only in the USA, but is considering international expansion, has been selling its product for about a year, has a website, a logo, and its motto is “Extinguish With Style”. So, why bother? After all, things are going fine, and what’s the harm in waiting?

I’ll try keep this simple.

First, FredCo may not be as unique as Fred thinks it is. Fred may be infringing on someone else, thereby wasting his time and money on a brand that could be taken away by the original FredCo! Fred may even be liable for damages for failing to conduct a trademark search before adopting his mark. There goes FredCo.

Second, FredCo may be unique, and hugely successful! What’s the easiest way to make money? Copy someone else! FredCo’s success could be it’s downfall if other, lower-quality companies dilute or tarnish FredCo’s trademark.

Third, since FredCo has international ambitions, registering FredCo’s trademarks gives it an opportunity to receive advantageous trademark treatment with other members of the Paris Convention. Trademark piracy can be avoided by early, strategic registration. Why pirate a registered trademark when others are unregistered? They’re like carjackers — they’ll keep trying doors until they find the one that’s unlocked. Easy pickins!

Fourth, if FredCo’s domain name isn’t precisely registered with the USPTO, they’re risking that someone else may have (rightly or wrongly) registered it. If so, the trademark holder may ask Internic (the entity that oversees most domain name registration in the US) to stop FredCo from using it’s domain name pending judicial determination of the FredCo’s rights.

There are numerous other reasons to trademark your business. Remember, trademarking is like voting: its best done early and often.