The "Who, What, When and Where" of Trademark Protection

Individuals and business owners are faced with a number of options when considering whether, where and when to formally protect the name of their business, products and services and the logos they use in connection therewith. The answers depend on the circumstances unique to each business, and it is important for owners to assess of the pros and cons of each option before filing for trademark protection.

Individuals and business owners are faced with a number of options when considering whether, where and when to formally protect the name of their business, products and services and the logos they use in connection therewith. The answers depend on the circumstances unique to each business, and it is important for owners to assess of the pros and cons of each option before filing for trademark protection.

Determining whether to file for trademark protection depends on the business owner's plans for their business and whether trademark protection is important to him or her. Once a trademark registration is obtained, no other business can use a similar name or logo that is likely to create confusion among potential customers. Therefore, if the possibility exists that other businesses may have a name or logo that would confuse customers about the source of the product or service, trademark protection may be a good idea.

Once a business owner has determined that trademark protection is right for her business, the next step is to determine where to file. A trademark can be filed with the United States Patent & Trademark Office ("USPTO") and/or with a Secretary of State, depending on whether protection throughout the United States, or within a particular state or states, is important or desired. For example, if the business owner plans to or is operating in multiple states, a trademark through the USPTO may be the best decision. A trademark obtained through the USPTO provides broad protection of the name or logo throughout the entire country. Alternatively, a business owner may not have plans to operate in more than one state and may only be concerned about ensuring that other businesses in that state do not use a name or logo similar to theirs. In that case, trademark protection can be obtained from the Secretary of State and will be limited to that particular state.

Determining when to file for trademark protection is also a decision unique to each business. Whether a business owner chooses to file for trademark protection immediately upon formation of her business and before she has an established customer base, or wait until the business is more established, depends on the circumstances. Such circumstances include whether the market in which the business operates is crowded and the potential for competition is high, and whether the business has the financial resources to spend on a trademark filing. For example, a new business owner who is initially only operating in one state, may not choose to expend the time and money necessary to obtain a trademark through the USPTO. She may instead initially choose to file for a state trademark and consider broader protection at a later date, or she may opt not to file until she is confident about how the business will expand and where she will operate. Alternatively, notwithstanding that a business may be newly established and unsure about the future, the owner may want to lock-in her broad based protection as soon as possible, and therefore file for a trademark through the USPTO right away. Business owners should be mindful that the USPTO trademark approval process typically takes several months, or longer, before full registration can be achieved, but the date of the initial application is the date from which protection begins.

Further, even if a business is not using its trademark in the market yet, but the owner wants to obtain trademark protection immediately, trademark protection can be obtained through the USPTO on an intent to use basis. By filing on an intent to use basis, the business owner attests that it has a good faith intention of using the trademark in commerce in the near future. This allows the business to set the date that trademark protection begins (i.e., the date of the trademark application) before they even begin selling their product or service in the market.

Certainly businesses have a number of options when deciding whether, where and when to seek protection of their names and logos. Thankfully, business owners do not have to make the decision on their own. PLDO's corporate attorneys can advise and guide businesses and individuals in their decision about whether, where and when to file for trademark protection. If you are considering filing for trademark protection or have questions about the process, please contact business lawyer Jillian Jagling at 401-824-5100 or jjagling@pldolaw.com. We welcome your comments, questions and suggestions.

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