Whether or not you have registered with the United States Patent and Trademark Office (USPTO), if you are operating a business, you likely have trademarks. A trademark is any word, phrase, symbol, or design, which distinguishes the source of goods. Your company name and logo are trademarks, and you should know that in the United States, your rights to your trademark arises from your use of the mark in commerce, rather than registration with the USPTO. As soon as you begin using your mark in commerce, you have certain rights that exclude other parties from later using that mark, or confusingly similar marks.
Factors to Consider
As a small business, the process of registering trademarks might seem cumbersome and expensive in your early stages. However, if you are at a startup poised for quick growth, registration might be worth the effort. Registration of a trademark confers the exclusive right to use the mark on particular goods, with some exceptions. Whether or not you chose to register your mark might also depend on what type of business you plan to operate. If your business lives on the web, and you find out that your marks infringe on another’s intellectual property, you can easily and cheaply edit your online presence. However, if you plan to manufacture or purchase branded inventory, you will want to be very sure that your mark is secure before you are left with a warehouse full of goods you can’t sell.
Limited Protections without Registration
If you use a mark in commerce and do not register it, you will have a common law protection to the exclusive use of that mark as it applies to the goods you sell and in the geographic area where you operate. If another company later registers that mark, you can still maintain your use of that mark as you used it and where you used it before the other party registered. For example, let’s say you sell MyWidgetCo brand Widgets in the Pacific Northwest, and you choose not to register your mark. Then another company registers the mark MyWidgetCo for the sale of widgets. You will still be permitted to sell MyWidgetCo branded widgets in the Pacific Northwest because of your prior use of the mark, but you will not be able to use the mark anywhere else. That means that when you’re approached for a deal to distribute in the Mid-West you will either have to decline, or sell under a different mark.
Intent to Use
If your business is not yet ready to operate commercially, but you still would like to protect your intended trademark, you can file an Intent-to-Use application with the USPTO. This will bar other entities from registering that mark for six months. However, you must begin using your mark commercially within that six months, file for an extension, or your application will expire. You might want to do this if you believe that other businesses are likely to try to register your intended mark, maybe because it applies to a hot trend. You might also want to do this before your business commits to purchasing inventory bearing the trademark or before your company commits to a branding campaign using the intended mark.
Your trademarks will always be the most secure if you register them with the USPTO. However, because of the cost and effort involved you may chose not to register. You will still have some rights and legal protections for your trademark, but not nearly the same as those rights and protections granted by federal registration. Whether the choice to register or not is right for you or your company depends on the specifics of your company, your products, your current status, and, perhaps most importantly, your goals.