To Trademark or not to Trademark – – That is the Question!

But First, Start with the Right Corporate Protection

These days, anyone can start their own business quickly and easily over the internet. There are, however, a few problems directly associated with the speed in which a company can be “created” online. The first is that many entrepreneurs don’t always spend the time (or money) necessary to properly ensure they’ve dotted the “i’s” and crossed the “t’s” with respect to the corporate structure of the company (Corporation or LLC or other). The second is that many don’t spend the time (or money) to protect their new brands and products.

Ensuring that you have the right corporate, trademark and/or copyright protection strategy in place is paramount to a new business’s success. Plus, it’s so easy and cost effective to do these things (even with an attorney) that you cannot afford not to do it. But, more often than not, entrepreneurs shrug these details off, and even more often than that, they pay the price later…often times tens of thousands more. This is especially painful when it costs much, much less than that to make sure you have it done right in the first place.

So for starters, talk to an attorney about creating the correct legal entity to protect your business. Many online companies allow you to “set up” a company in a matter of minutes. What many people fail to realize, however, is that simply filing Articles of Incorporation (Corporation) or Articles of Organization (LLC) doesn’t necessarily mean you are personally protected from liability if things go wrong. Much more needs to be done to ensure you are personally protected. And in our opinion, the disservice provided by many online corporate start-up companies to unknowing consumers is a travesty and can be catastrophic to individuals or small businesses. Talk to an attorney!

Once your corporate structure is in place, look at your products and services and consider the value in their brands. For a few hundred dollars, it’s likely a very good idea and wise investment to protect your brands by registering them as trademarks. Here are some tips to help you identify when you should or should not file for trademark protection.

• You should file a trademark… if you want to protect your brand name and its value nationally or internationally.

• You should not file a trademark… if you don’t care about whether or not your brand name is stolen, and potentially your reputation tarnished. Even if you don’t care about this, you should at least do the minimum to ensure your brand is not in violation of other trademarks. Hire an attorney for this. It will cost you a few hundred dollars and may save you tens of thousands in legal fees and damages later.

• You should file a trademark… if you are already marketing your products with a unique brand. If you have a unique brand that you’d like to protect, immediately start using the “TM” (goods or services) or “SM” (company service mark) symbols. This will provide you with common law trademark protection. But you likely need more than this. Please note, however, that you cannot use the federal registered trademark circle “R” symbol “®”, which denotes a fully registered trademark by the United States Patent and Trademark Office. Using the ® without having a fully registered mark immediately subjects you to statutory damages.

• You should not file a trademark… if you have no intention of monitoring your trademarks or properly defending them. You have to be vigilant in your efforts to defend your trademark. Not doing so and not properly filing paperwork to renew your trademark may cost you (and your business) ownership of your trademark! Not to mention all the goodwill you’ve established in your brand. This could literally cost you thousands if not millions of dollars in value.

• You should file a trademark … if you take your business seriously, want to protect your hard-earned goodwill, and want to see your business thrive.

Despite all the information available online, trademark law is complicated. And while hiring a trademark attorney is not required in order to file for a trademark, it is highly recommended.

WINTER LLP® is a corporate, transactional, regulatory and intellectual property law firm focused on traditional and emerging markets, with offices in Orange County, San Francisco, and Arizona, servicing clients around the world.