Running a busy e-Commerce store is a lot of work and you have a lot of real-world issues:
As a law firm that primarily works with scaling startups, a lot of our clients have been so busy handling the stuff that is urgent and right in front of them that they forget to take care of important but not so urgent details like their agreements, financials, and intellectual property.
Unfortunately, these important and not urgent issues can turn into VERY big, very important, very urgent, and very expensive problems down the road…
And this is when our clients TYPICALLY come to us.
My goal in this article is to help you jump on these issues BEFORE they are urgent or big, so you can knock them out of the way much more affordably and strategically.
Today we’re talking about TRADEMARKS.
Whether you have an entirely unique product that isn’t available anywhere else, or you sell a pretty similar to a handful of your competitors, your BRAND is what sets you apart from everyone else.
Your brand helps people remember who you are and what your company stands for.
Your brand shows up in your design, look, feel, and your overall vibe.
Your brand probably even ties directly into your company values and how you communicate with your customers.
So how did you come up with your brand?
If you’re like most of the e-Commerce stores we coach and work with, you probably followed a typical path when you picked out the NAME of your store, your products, and your brand.
Does that sound about right? What’s missing?
This is a common approach. You keep iterating through these steps until you decide on a brand that meets all your criteria. Or you get tired of searching and settle for something that is “good enough.”
But if you’re not thinking about the legal side of your brand at the same time, then you’re missing out on how to 1) improve your brand research process, and 2) capture the full value of the brand you eventually choose.
The short answer is you can only protect your brand — the value of your product sales to your customers — if you have ways to legally stop other sellers from “infringing” on your brand.
A trademark is the way you identify your brand to consumers.
Here’s how the US Patent & Trademark Office defines a trademark:
“A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”
In other words, your trademark designates that your products and services come from you, and not from a competitor. And because trademarks give you legal rights, you can use trademarks to stop competitors from copying or looking like your brand.
One of the most common questions I receive when I’m speaking with e-commerce groups or doing Q&A sessions with online store owners is, “If I already own my URL, should I also register my trademark? What are the extra benefits I’ll see with a formal trademark registration?” I love these questions because I get to highlight how trademarks protect your brand after it’s established AND help you in your initial brand selection for new products.
Owning a trademark identifies YOU as the source of your goods and services and gives you legal protection for your brand.
This means no other company or individual can use a conflicting word, phrase, or logo as their brand for products or services in the same category as you.
However, without trademark protection for your brand, you might not have any way to stop another company from copying your products or redirecting customers to different products without your permission.
There are many ways trademarks help create and protect the value of your brand. We like to think of these in four categories:
We talk about each of these categories in more detail in our blog post HERE.
Trademarks give you the power to stop competitors from using your brand. Here are some common ways you benefit from exclusivity:
Exclusive Industry Protection with Customers. Reserve exclusive use of your name in your industry with specific products and services. Your registration allows you to demand that others stop using the same or similar marks with your customers.
Exclusive Protection against Competing Registrations. Block competitors from acquiring their own trademarks that would conflict with your brand. A future registration request by your competitors can be blocked in the registration process based on your prior registration.
Protection in related Product Fields and Industries. Establish a basis for protecting your future expansion into related products and industries. Trademark law recognizes that, in addition to the specific products and services listed in your registration, it is reasonable to expect you might expand into tangential fields as you grow your business and market share.
Incontestable Status of your Registration. Acquire "incontestable" status with your mark with the US Patent & Trademark Office. This raises the threshold required for anyone to challenge the validity of your registration.
Enforcement on Social Media. Create a basis for enforcement on social media platforms like Facebook, LinkedIn, and Instagram. Most platforms have an established process for submitting your registration to quickly stop infringers from using your branding. This can be a very efficient process to shut down unauthorized sites and uses of your branding.
Enforcement on Amazon. Create a basis for enforcement on online sales platforms like Amazon. Efficiently stop unauthorized sellers whose products are improperly marked with your brand or a confusingly similar brand.
Website Domain Cyber Squatters. Fight cyber-squatters who register website domains to compete against you using your own brand. You might even be able to force cyber squatters to turn over their domains to you.
Monetary Damages. Set up the opportunity to enforce your rights in federal court and receive more money from infringers. Registering your trademark creates “constructive notice” meaning infringers should have known about your trademark rights, even if they truly didn’t know about your specific registration.
Clear Rules for Dispute Resolution. Use well-defined rules for enforcing your trademark rights under federal laws (as opposed to common law rights in different states). Using a clear, standardized set of rules about your rights and how to enforce those rights allows the courts, arbitrators, or mediators to efficiently resolve disputes. This makes pre-litigation negotiations more straightforward, too.
Exclusive Rights Forever. Federal trademark registrations can protect your brand indefinitely. As long as you continue to use your mark with the same types of products and services, and you pay the occasional renewal fees, you can continue to benefit from the legal protection of your trademark rights indefinitely.
You should invest in trademarks for your brand whenever you have found "product-market fit" with your customers. This might be after you’ve completed thorough market research or after you’ve sold hundreds of units.
More important than when you file your trademark is how you use the trademark process and tools in the early stages of developing your brand in the first place.
One of our clients picked their business name before they started working with us. They had already invested time into naming their company and discussing possible equity investments with partners. However, when we looked at helping them register their business name, we discovered the risk of a potential conflict with a large, existing online brand. This sent them back to the beginning of their branding process to pick a new company name, which put pressure on them because they were already creating products and knew they would have to invest extra effort (and money) to switch their branding while they were already up and running.
Another client brought us into their branding process early (pre-launch) to help research the name of their next consumer product. They had a name they wanted to use, so we researched that name relative to other trademarks that were already registered or filed. We discovered another trademark application for something similar that had failed the registration process previously because of a potential conflict with a large professional sports franchise. Identifying that risk early helped us craft their application in a way to anticipate and steer clear of the same problem that stopped the prior company from getting their trademark registered.
So even though you might not file your trademark application until you have established product-market fit, you should take advantage of the trademark process to help you research potential branding trademarks before you commit to a mark that is destined to run into problems.
Trademark applications, if done wrong, usually can’t be salvaged. You lose the money and, more importantly, the time you put into an application that's not filled out properly. You’ll have to start all over from the beginning to do it correctly.
If you’re a foreign applicant outside the United States, then you are required to use a US attorney to apply for your US trademarks.
Be careful not to get scammed by anyone who says they can file your trademark but isn’t an attorney. They are breaking the rules, and that could impact the validity of your trademark because the US Patent & Trademark Office could deem your trademark application fraudulent.
It could also impact the ownership of your trademark because some non-attorneys skirt the rules by listing their company as the owner of your trademark.
If you are a US-based individual or entity you’re not required to have an attorney apply for your trademark. However, I highly recommend it because it’s easy to mess up your filing, and once it’s messed up you’ll end up hiring someone to start over and fix it anyway. Save yourself the wasted 6 months and get someone who has experience with trademarks to help you file yours.
Even the US Patent & Trademark Office — where you file your trademark application — recommends that you use an attorney:
“In the long run, hiring an attorney may save you money because an attorney will know how to best advise you on your trademark’s registrability, prepare your application, and respond to the USPTO on various issues that might arise throughout the process.”
This is important, so the USPTO repeats this suggestion in other places:
“Although you are not required to have an attorney, we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the application process.”
So make sure the attorney you hire is also experienced with trademarks for e-Commerce companies.
Step 1: Choose the mark you want to use for your branding
Choosing what you want to trademark is probably a little more tricky than most people think. You have several different things to consider at this stage related to the format of your mark:
You can register several different marks that are related to each other, but you will need a separate trademark application (and government filing fee) for each mark format you want to protect.
Step 2: Identify the goods or services you want to brand with your mark
In addition to the mark format, you also need to identify the “goods or services” that you plan to brand with your mark. You can choose pre-defined goods or services, you can customize your own goods and services, or you can create a combination of both.
Goods and services are divided into classifications. If your goods and services cross over into more than one classification, you must pay a separate government filing fee for each additional classification.
Step 3: Do a clearance search to see if your mark is available
This is where you can really be strategic. By searching for existing trademarks that might be similar, you can learn whether your mark is likely to be registered. You can also anticipate any major issues that might come up when your trademark application is examined.
The two biggest hurdles are related to “distinctiveness” and “likelihood of confusion.” These are really important, so we walk through each of them below.
Your Mark Needs to be “Distinctive” Compared to the Products or Services you Offer
The first hurdle is called “distinctiveness” or “legal strength.”
Your mark must be distinctive relative to the type of goods/services you are branding. This means your mark must not be generic or merely descriptive of the goods/services. There are four general categories of marks:
We’ll walk you through the different levels of distinctiveness in more detail on our website HERE.
Your Mark Needs to be Unique Compared to the Competitors’ Brands for Similar Products or Services
The second hurdle you need to navigate is “likelihood of confusion” meaning that your mark must be different from other trademarks for similar goods and services that are already on the market. Specifically, for both registration and infringement, trademarks are analyzed for “likelihood of confusion” with one another.
Marks can only be registered if examination by the USPTO concludes that there is not a likelihood of confusion with another existing mark for the same or related goods or services. The test for “likelihood of confusion” is multi-factored, but the most relevant indicators that a new mark is not likely to cause confusion (and therefore can be registered) are typically:
Check out our full blog post on likelihood of confusion HERE.
Step 4: File your application
For each mark format, the USPTO requires a separate filing fee. Also, if you want your mark to cover more than one classification of goods or services, the USPTO requires another filing fee for each additional class. This means that the number of filing fees can multiply if you have multiple mark formats and/or multiple classifications.
As an example, if you want to protect your business name for two classes, your logo for two classes, and two product names each for one class, then you will need to pay six filing fees.
Step 5: Coordinate with the examiner and overcome any rejections
After you file your application, a trademark examining attorney at the USPTO will usually start the examination process in about 3 or 4 months. You typically won’t hear anything before then.
The examining attorney will review your application, compare it to existing trademarks, and determine whether you meet all of the registration requirements. If they see any obstacles, they will send an “office action” and explain why your mark can’t be registered.
An “office action” isn’t necessarily a final decision. We help many clients respond to office actions and collaborate with the examining attorney to try to get every trademark application registered. This back-and-forth process can take a few months or several months, depending on the issues raised by the examiner.
Step 6: Get approved or denied
Ultimately, you’ll reach a final decision about your trademark application. If you’re successful, then your application will be “allowed” and proceed to publication and registration. From start to finish, this process is often 6-12 months.
Remember, the better you research your “clearance” upfront, the easier it usually is to successfully achieve registration.
Step 7: Make sure you’re using it in interstate commerce
You can apply for your trademark application before you start actually using your trademark with your products or services. You can even finish all of the examination successfully. But at some point before you can get your registration certificate, you must show how you are using your trademark in interstate commerce.
Usually, for e-Commerce sellers this is straightforward — we just provide a link to your product sales page that shows your trademark with your product in the class of goods on your original application.
Step 8: Get your registration certificate
After you’re approved, the USPTO will send a formal registration certificate that you can hang on your wall, if you want to.
Also, you can easily show evidence of your registration in case you need to submit an infringement claim to shut down unauthorized sellers.
Step 9: Start using the R designation ®
Before you get your registration certificate, you can use the ™ designation for your business and products. After you get your registration certificate, you can start using the ® (or circle R) designation with your trademark when you use it with the goods or services listed on your registration certificate.
Step 10: Maintain your trademark
After you’re registered, you can keep your trademark registered for as long as you continue to use it for the same goods and services listed on your registration certificate. You just have to periodically renew your trademark registration — in the US the renewal is after 5 years and every 10 years from your registration date. Some countries have more frequent renewal requirements.
We love trademarks because they are a very strong form of intellectual property protection for your brand. As with everything else in your company, it’s important to follow a strategy and create a competitive advantage for an edge over people who might compete against you or try to undermine your business.
As you grow, look for opportunities to strengthen your competitive advantage by also protecting your products using utility and design patents and protecting the trade secrets and copyrights within your business. These can prove to be successful parallel avenues for value creation and enforcement against potential infringers.
Trademarks and Intellectual Property are very important as you build your brand and your business. There are lots of ways that a registered trademark can save you money, narrow your focus, protect you from competitors, reinforce the value you’ve built with your products and branding, and even allow you to protect your name online.
As you do what you do best — building great products and creating a loyal customer base — don’t leave the Trademark side of things unprotected.
We love working with tech companies, startups, and e-Commerce stores to make the process as simple as possible so you can move forward with peace of mind.
If you’re reading this and have questions or you know you’re ready to go to the next stage, schedule a free strategy call with us!
We’d love to hop on the phone, hear about what you’re up to, and let you know how we can help.
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