The COVID-19 pandemic
has fundamentally changed the way people across the world exist. This change
has been as true for individuals as for large and small businesses.
Specifically, businesses have had to transform the structure of their work to
fit the constantly changing COVID standards. Organizations that previously did
not operate a website or yelp page, began to conduct business over the
internet. Businesses that had a preexisting online market were pushed to make
their online market their primary market. The overwhelming transition of
businesses onto online platforms has propelled a renewed importance of
obtaining trademarks and intellectual property protection for one’s business.
So, what is a
trademark?
A trademark is defined
as “any word, phrase, symbol, design, or a combination of these things that
identifies your goods or services,” by the United States Patent and Trademark
Office, the regulating agency.1 Essentially, a trademark helps a
business protect qualities that people use to identify the business, including
brand names and logos. Think about the shape of McDonald’s golden arches or the
Coca Cola bottle. Each is immediately recognizable and associated with its
respective brands regardless of whether it is labeled as such. Without trademarks,
anyone could use the golden arches or the bottle shape and capitalize on the
brand names, thereby diminishing the recognition value they hold.
How do I apply for a
trademark?
Obtaining a trademark
can be a straightforward and simple process as much as it can be a difficult
one, depending on the desired trademark. First, you must choose what type of
trademark you wish to acquire, a standard character mark, a stylized mark, or a
sound mark.2 A standard character mark will protect your brand name
anytime it is used in writing. A stylized mark will protect your brand name,
specifically with its colors, font, and style when used in writing. Lastly, a
sound mark will protect your brand’s sound or audio logo. Be aware, the mark is
only protected across the specific class of goods or services you apply for,
and not across the board.
Next, you must cross
check the Trademark ID Manual3 to search for similar trademarks. If
your desired trademark has already been trademarked by someone else, you may
need to alter your mark to be unique. This alteration may include adding a word
to the name, changing the color of the logo, or scrapping it altogether. This
can be a frustrating process, but it is better to find out early on that you
may need to change your mark rather than running into legal issues later.
Finally, you need to
choose a filing basis: use in commerce, intent-to-use, foreign registration, or
foreign application basis.4 A use in commerce basis is most common
as it means you are currently using your mark in commerce to sell goods and/or
services.5 An intent-to-use basis signifies you plan to use the mark
in commerce but are not currently doing so.6 A foreign registration basis
implies you already own a foreign registration of the same mark from your
country of origin.7 Lastly, a foreign application basis implies you
own a foreign application for the same mark.8
Once you have made all
the mentioned distinctions, you can put together an application for your
trademark. Although you do not need an attorney to file a trademark
application, the United States Patent and Trademark Office strongly encourages
you to get an attorney to guide you and review your application.9 On
the other hand, if you live in a foreign country, you do need to be represented
by a United States licensed attorney. There are many options for pro bono
attorneys, including law school clinical programs.10
Why is obtaining a
trademark especially important now?
As businesses move
online, so does the possibility of confusing one business with another. Local
customers may recognize your business by its brick-and-mortar location or by your
friendly face at the counter. Without these familiar factors, your customers
may mistake “Detroit Coffee” for “Detroit Coffee and Tea.” A trademark allows
you to stake claim on your name and prevent another business from using the
same or too similar of a name. Additionally, the trademark process will help
you discover if someone is already using your name and prepare you to protect
yourself from legal repercussions. Online business platforms are also more
widely accessible. A trademark can prevent someone from taking your business
and branding it as their own. This protects the years of effort most businesses
spend on branding and building their reputations. Trademarks are now more
important than ever. Protect your business as we continue to adapt to pandemic-friendly
ways of business.
By Zeba Khetani
1.
What is a Trademark?, USPTO (Mar. 31,
2021, 12:00 PM), https://www.uspto.gov/trademarks/basics/what-trademark.
2.
Get Ready to Apply, USPTO (Sept. 22,
2021, 9:01 AM), https://www.uspto.gov/trademarks/basics/trademark-process#step2.
3.
Trademark ID Manual, USPTO,
https://idm-tmng.uspto.gov/id-master-list-public.html (last visited Nov. 7,
2021).
4.
Basis, USPTO (Mar. 3,
2021, 6:14 PM), https://www.uspto.gov/trademarks/apply/basis.
5.
Id.
6.
Id.
7.
Id.
8.
Id.
9.
Get Ready to Apply, supra
note 2.
10.
Law School Clinic Certification
Program, USPTO (Oct. 20, 2021, 4:06 PM), https://www.uspto.gov/learning-and-resources/ip-policy/public-information-about-practitioners/law-school-clinic-1.