Answering the 3 most common questions for inventors, entrepreneurs and small business owners

Not filing a federal trademark can result in the United States Patent and Trademark Office denying a trademark based on “likelihood of confusion” with an existing mark.

Today’s tech-enabled world offers unlimited potential for entrepreneurs, with people of all ages and backgrounds embracing business ownership. It’s exciting to start a business, but even the most optimistic among us may find some aspects of it intimidating. Intellectual property and associated concepts, in particular, can be confusing for an entrepreneur or small business owner.

Here we will provide a basic overview of trademarks and answer the three most common questions on the topic.

What can be trademarked?

A trademark, according to the United States Patent and Trademark Office, is a “word, phrase, symbol and/or design that identifies and distinguishes a source of a particular set of goods from another.” Services also fall under trademarks, and the word, phrase or design that distinguishes the source of the service is called a service mark.

Some examples of famous trademarks include the McDonald’s arches symbol, Nike’s “swoosh” logo, and Apple’s bitten apple logo. In addition, while it’s rare, some colors can be trademarked; luxury jeweler Tiffany & Co.’s famous “Tiffany Blue” color is registered as a color trademark.

For the purpose of distinguishing what each protects, it’s important to briefly mention copyrights and patents. A copyright protects original works of authorship, such as literary, musical and artistic works. A patent gives the holder the right to exclude others from making, using or selling a particular invention without the inventor’s consent.

Should you trademark your product or service?

Business owners often wonder if there’s a need to trademark their goods and services, particularly if they have incorporated a business or secured a website with the business name. Neither of these offers federal trademark protection.

There are usually some common law protections available at the state level without officially filing for a trademark. However, there are many benefits to filing federally.

This allows a business to sell its product freely and build its brand, which is often critical to success in the age of digital and social media. In addition, another business could come along and file a trademark for a similar product and name. This could affect the business owner who chose not to file the trademark, as the USPTO can deny a trademark based on “likelihood of confusion” with an existing mark.

Therefore, it’s often to a business owner’s advantage to file the federal trademark.

How can you get started with trademark filing?

Suppose you come up with the perfect name for your new bakery business and want to trademark it. Before you order promotional items with your desired name and logo, it’s a good idea to see if there’s an existing business with the same name and similar products.

As discussed earlier, the USPTO can deny a trademark if it’s likely to be confused with an existing mark. Filing fees aren’t refundable, so it’s best to minimize any reasons an application could be rejected by performing due diligence.

You can search the USPTO’s database for existing marks and designs. The database allows users to search for specific names or word combinations in the basic query.

For users who want to do an expanded search, the system has the ability to search a wide range of fields. Try to search multiple combinations of a name. For example, if your bakery’s name is “Deb’s Delights,” be sure to search “Debbie’s Delights,” as well as other variations of that name.

You should also search the internet for businesses with similar names. The goal is to avoid filing a trademark that will be rejected for being too similar to an existing mark. Some companies offer trademark search services.

It should be noted that the USPTO trademark filing does not apply to international trademark protections. This process is handled under a treaty known as the Madrid Protocol.

Once you’ve performed the search and decide to move forward with filing the trademark, you’ll need to begin the process here:  uspto.gov/trademarks-application-process/filing-online/initial-application-forms

Next, here are three decision points for you on your trademark application.

Basis: What is your basis for filing? Here, the USPTO is asking whether the goods or services are currently “used in commerce,” or whether there is an “intent to use.”

If the goods or services are already being sold with your mark, you  need to provide documentation of this fact but file as “use in commerce.” If you haven’t used the mark in the selling of your goods or services, the filing basis would be “intent to use.”

By filing in this manner, you’re indicating your intent to use the mark in commerce. Oftentimes a business has many of the components set up but isn’t quite 100 percent market ready. Note that the “intent to use” filing basis has additional fees and filings to convert the application to “use in commerce.”

Class: Class is the way the USPTO identifies goods and services. There are 45 classes, with classes 1-34 for goods, and 35-45 for services.  A listing of the classes can be found here: uspto.gov/trademark/trademark-updates-and-announcements/nice-agreement-current-edition-version-general-remarks#class-headings-with-explanatory-notes

It’s important to identify the proper class of your goods or services, as the USPTO will generally examine whether a mark for similar goods already exists in a class. This is one of the primary reasons the USPTO denies an application, so it’s important to ensure your mark and class are unique or novel enough to pass scrutiny.

Identification of specific goods and services: The USPTO requires you to be specific about the items you are currently selling or intend to sell using your mark. There’s an “ID Manual” that lists thousands of goods and services; you use this to help identify the specific items you’re selling in a class.

For example, if you’re selling coffee drinks, you would file using class 30 and would list “coffee drinks” in your description. If you also sell coffee beans, unroasted coffee and tea, you would list these items in your description as well.

Descriptions can be tricky. It may be possible to reduce the number of specific goods and services in a description if the USPTO has issues with your application, but you’re not able to expand your listing. Any new goods and services would likely require a new application and separate fee.

In summary, the process of filing a trademark can be daunting for inventors and small business owners. For more information on trademarks, check out Chapter 4 of the Michelson Institute for Intellectual Property’s free interactive ebook, “The Intangible Advantage,” and Sections 8 and 9 of its free online course “Intellectual Property: Inventors, Entrepreneurs, Creators.”

This information was provided by the Michelson Institute for Intellectual Property, an initiative of the Michelson 20MM Foundation that addresses critical gaps in intellectual property education to empower the next generation of inventors. Michelson 20MM was founded thanks to the generous support of renowned spinal surgeon Dr. Gary K. Michelson and Alya Michelson. To access more resources, please visit MichelsonIP.com.

Nothing in this article shall be construed as legal advice, or as creating an attorney/client relationship.

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The Michelson Institute for Intellectual Property, an initiative of the Michelson 20MM Foundation, addresses critical gaps in intellectual property education to empower the next generation of inventors. Michelson 20MM was founded thanks to the generous support of renowned spinal surgeon Dr. Gary K. Michelson and Alya Michelson. To learn more, visit 20mm.org.