Startup Focus: Navigating the Trademark Process

Once you have decided to start your business, you may be wondering whether you should apply for a trademark to go along with your new venture. There are many benefits to registering a trademark for your startup, including an ability to use the mark to establish your unique brand and to exclude others from using the same or similar trade names or logos.

It can also have considerable value to your business at a later stage, when you might be considering franchising, licensing your mark for an extra revenue stream, or even selling your business outright. Investors, franchisees, partners, and customers will all be reassured to see you have taken the time to protect your brand through a trademark registration.

But before you embark on that process, there are a few things you’ll want to accomplish. Here are the steps you should usually follow:

Conduct some preliminary research

Hire an attorney who has experience in trademark law to conduct a comprehensive search here. He or she will know the proper databases to search and methods to use to verify that your mark is clear for usage. (Startup tip #1: You can save time and money by doing some of the research on your own through simple Google searches. If you come across someone running a similar business with a really similar name, it may be time to put on the brakes.) The goal of this step is to make sure that no one else is out there using your name or mark in commerce in a way that might cause confusion to consumers.

This serves two purposes: (1) you can be confident you are not infringing someone else’s mark and (2) you can safely begin investing money in the creation of your brand. You don’t want to be the proud business owner who just placed a $10,000 order for t-shirts, stickers, and mugs with the new brand name plastered on them, only to receive a Cease and Desist letter the next week from a company who thinks you’re infringing on its mark.

Invest a little up front on research, and spend on company swag to your heart’s content later.

Use your trademark

In most cases, it will be best to go ahead and use your trademark in commerce before filing for a registered trademark. Why? In order for the United States Patent and Trademark Office to approve your application, you will have to submit a specimen showing the mark in actual use on a product or promotional material (or you can file an affidavit promising that you will use the trademark within six months).

Either way, you can begin accruing common law trademark rights when you use your mark in commerce, and you are putting the rest of the world on notice that you have rights in that property. Also, you get to use that little TM symbol next to your name.

Make your trademark official

Now it’s time to file an application for your trademark. The process can take months, and sometimes over a year, but hang in there, it’s worth it. Remember, your customers ($) and investors ($$$) are going to be impressed. If you or your attorney has conducted a proper clearance search, the process should be a lot more straightforward, with fewer surprises.

File the application, with your specimen, and a description of the goods and services you plan to use your mark on, and wait for your response. (Startup tip #2: Let your trademark attorney draft and file the application if you’re inexperienced. You usually only get one chance to respond to a refusal from the Trademark Office, and after that, they eat your filing fee.)

Before long, you’ll have your very own United States trademark certificate framed in your office. Now don’t you feel like a real business owner?

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Merithew Law via Forrest, along with several other awesome people and brands, is working with CO Active (Colorado Outdoor Gear Manufacturers Association) to put on an information series over the next year providing insights and forum information in a number of specific areas of need highlighted by its members, such as human resources, insurance, PR and marketing, legal (entities, investment, manufacturing and product liability, and IP), and more. These sessions are forum based with an industry moderator and a panel composed of both industry and some non-industry (diverse insights) folk with great experience in each specific area.

The first session is focused on human resources (HR) and related principals and issues this August 22, 2018 at Wayfinder Co-op on Santa Fe Dr. in Denver from 5:30 to 8:30 pm. It will also include beer and pizza, donated by Crazy Mountain Brewing Company and Denver Pizza Company. The Panel is moderated by Todd Stockbauer and includes Deanne Buck, Ryan Evans, Mark Hansen, and HR consultant Melanie Kruger. These individuals have worked with and represent brands and experiences such as Topo Designs, Camber Outdoors, Navy Seals, Spyder Ski Apparel, and more.

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