If I had a penny for every time a client said they didn't need a trademark, then I'd be richer than the CEO of that fruit software company. Ok, not really, but it's something I hear all the dang time.
So gather 'round the internet campfire and let me tell you why trademark protection is something start ups need. Business law isn't just for corporate big bigs, yall! I'm looking at my Slidell businesses.
Trademarks protect original names, slogans, logos, colors, and scents used in business. You check out our previous blog Trademark 101 for more information too. For most of yall, you're going to be focused on names, slogans, and logos. This may sound silly, but only work that you use in connection to a product or service "in commerce" counts. So if you draw a cute dog riding a bike for a logo, but it's just for your personal collection, then you can't get a trademark. But if you use that as a logo for your dog pedicab business, then, in the paraphrased words of "Carl Weathers" on Arrested Development, "Baby you've got a trademark going!"
Your trademark must be registered to a certain class of goods or services (these are servicemarks). This is why you see a TV show named "The Simpsons" trademarked for a television series and a gas station named "The Simp Sons Gas". They are for different goods or services.
A trademark registration allows you to stop others from using your mark. There is a catch- you can only stop folx from using that mark for the same goods or services as yours. Federal courts and United States Patent and Trademark Office examiners use a likelihood of confusion test here. They look to see if a reasonable customer would see that mark and think it was you.
The reason for this is it allows you to police and protect your brand. If someone is using a similar name or mark as you, then it can hurt your business. Customers may buy an inferior product and think it's yours. Or at the very least, you're losing out on revenue from the copycat out there.
My short and conservative answer here is no (remember you need to talk to a lawyer about your specific facts and this is not legal advice). While you CAN, it's just a matter of time before someone else marks your name, logo, slogan, or color federally. When that happens, if you don't oppose it (and you would have to be tracking it), then they will get superior rights to you. Federal trumps state. Otherwise, your state mark is only good in your state. Here's an example. You're selling custom t shirts and you trademark a particular design in Louisiana. Yet you sell it in Mississippi, Oklahoma, and Alabama. Your Louisiana mark can't stop someone selling a similar design in those other states.
You also will be unable to internationally protect a trademark with just a state trademark. Though there is no harm in getting a state trademark while waiting on your federal mark.
Yes! A federal trademark allows you national protection for your mark. You don't have to go file state trademark applications in all 50 states. Your federal trademark covers all those states. It does cost more than a state trademark, but it's still affordable for a small business. Depending on your application it is about $250-$350 per classification of goods or services. The downside is if your application is denied, then you do not get that filing fee back. Also if there are any issues with the application, the process of responding is complicated and on a fixed deadline. It's best to get an trademark lawyer to do that for you.
You need a federal trademark before you can apply for international trademark protection.
Once you get your trademark, you have to police it. A lawyer or a trademark company can do this for you. If someone uses your trademark, then you have to send a cease and desist letter. If they do not comply then you will need to sue them. It sounds like a headache, but if you don't police your mark, then someone could argue you have abandoned it. That would invalidate your protection if the USPTO and a judge agrees.
If you apply for an Intent to Use application, then you must provide an Affidavit of Use once approved before your mark is final.
You also have to renew your registration through a Declaration of Use (showing you still use the mark) 5 years later. And then again 10 years after that.
Yes! You can put a value on your intellectual property like a trademark (it also can include copyrights and patents). You have an exclusive right to this mark with your brand. This shows investors and future partners you are serious about your products and services.
It can also serve as another revenue source for your Covington small business. When you have a trademark, you can license it to another person or company for a limited fee and for a limited time. They basically pay you to rent the slogan, logo, design, or name. The licenses or branded partners are a good way to expose your brand to a larger market. With that comes the risk of copycats which is why a trademark is helpful to insulate your intellectual property from getting jacked.
Before you run off and register, make sure you get a Louisiana intellectual property lawyer to do a viability memo for you. That's where to attorney reviews existing trademarks, similar brands, and can tell you the chances of you being successful before you spend your hard earned cash. Note that lawyers can never guarantee what a USPTO examiner or a judge will say, but they can use their experience to help give you the pros/cons. It may be better to rebrand with a new name or logo and register from there. It does cost a little more on the front end, but it's a lot cheaper than getting entangled in litigation with someone who has a similar mark already registered.
Need help getting a trademark, reviewing your mark, or just want to talk through the pros/cons of one? Get started with a paid consultation with Amber & Tubbs.
You can shoot us an email at sheppardlawinfo@gmail.com to start a conversation or text/call our assistant Brielle at 985-265-7069. We offer quick and easy online scheduling once you clear a conflicts check.
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Please note that this entire article, as everything else on this Sheppard Law website, is the intellectual property of Amber Sheppard and Sheppard Law. It should not be reproduced in any fashion without explicit written permission. This article was originally published July 13, 2023.
