Article by Adhip Ray, consultant at PatentPC.
You have a business? Well, then you need a trademark!
This article outlines a few trademarking insights shared by entrepreneurs.
A trademark is one of the most important legal matter that most startups need to consider, after they set up shop. That’s because, once you invest thousands of dollars to create your own brand, you don’t want someone to just come over and steal your brand name and the goodwill.
And good news, they can’t – provided, you have trademarked your business name as well as the product or service name that you are selling.
Now trademarking is not a difficult stuff to do. While you can do it alone, it is suggested you take the help of a lawyer.
That said, we asked several entrepreneurs how they got their own trademarks. And the answers we received were quite interesting. Before you begin your trademarking journey, you may want to share in the experiences of these several entrepreneurs like you.
Table of content
#0. Why Trademarking is So Important
“By trademarking my company name, my business gained an identity, which made my services and products distinctive in terms of my competitors, becoming my intellectual property. This has prevented anyone from stealing or copying my brand.
Trademarking my business acted as a catalyst for increasing its value as the business matured. I then used it as a marketing strategy in aiding my recognition and attracting customers.
Look at it this way; once my business got a positive reputation for its products and services, the consumers associated the trademark with how the business is running. In addition, and ever since has since enabled me to get more customers and even employees for my business as it is now clearly seen that my business means business.
If you have a startup and plan to make it big in the market, I’ll advise you that trademarking it is essential to its success. A Trademark is forever permanent with a need only for periodic renewal.
It is also very delicate since it carries the image of your business; if it is taken negatively, so does the whole business, so you should be very careful with it. A business that is trademarked is always protected towards success.”
#1. DIY Approach to Getting Your Trademark Done!
Wesley Exon, CEO at RNT to BSN Program shares that he got his trademark without the help of a lawyer, paralegal or even a law student. In fact, in the first year of him starting his business, he got himself a trademark.
In his words –
“When I was at a point where I realized that my business was going to take off and be a success, I knew that I needed to make sure that I protected my business name and the names of all my products.
These days, doing things on your own is possible and highly recommended. With the internet and other resources available, you can do almost anything without leaving your home.
So when it came to protecting my intellectual property, I turned to the internet and figured it out as best as possible by using various online tools and services for trademark applications.
I got lucky because everything went smoothly for me after the initial application. But many people who go through this process on their own have many problems arise during their trademark application process, so they end up having to hire an attorney anyway, which can cost them thousands of dollars in legal fees.”
“I applied for a trademark for my company name Springrose a few weeks after settling on the name in 2020. The process of applying was easy, but it took a lot of upfront research, mainly because I was afraid of doing it wrong.
I read many of the manuals the USPTO provides and researched whether my trademark was available in their database.
This gave me the confidence to apply for it myself, but I still had to look up a few things as I went along. For example, did I need to apply as an “intent to use” or a “use in commerce?”
Ultimately, I did it right and it was an empowering experience.
One pro-tip for anyone wanting to apply for their own trademark: look up your competitors and what codes they are using for their trademark. That’s what I did and it removed some of the ambiguity from the process.”
“I trademarked the term “Member for a Day” by myself.
I felt the process was in the grand scheme of things rather straightforward. The person assigned to my case from the department was helpful and explained all of the steps I missed, etc. For instance, when I took a screenshot of our use I didn’t include the time stamp on my computer so I needed to resend it.
For entrepreneurs looking to save on cost, I would HIGHLY recommend they do it themselves instead of hiring a 3rd party.
The strangest part of the process is if you get denied the trademark. All of a sudden, dozens of 3rd party companies start reaching out to you to offer their services. First and foremost, this is a complete annoyance and secondly, my gut tells me that many people think this is the Trademark office reaching out (instead of a 3rd party provider) as a lot of their emails are designed to make you think that.
If nothing else, I want to make sure that those who get denied understand that they need to be careful which correspondence they respond to and that any additional charges are completely unnecessary for re-filing a denied trademark.
Ultimately I was successful in getting a trademark for ‘Member for a Day.”
#2. Entrepreneur Shares his Insights on Getting a Trademark done by Yourself
Deaver advises that until it is filed & approved, you should use a TM on your name/mark. Start by searching online the PTO, patent, and trademark federal sites as those are excellent for free search and to get ideas.
However, Deaver advises that once you have identified availability, then use a legal pro in this specialty.
In fact, in PatentPC’s existence as an intellectual property rights facilitator, we have seen how difficult it is to get a trademark by oneself. But that’s not where the issue arises. The issue remains on being unable to file a good enough trademark at the beginning, which gets opposed later on by other businesses.
Therefore, once you have found the availability of a trademark, and you’re pretty sure your business will succeed, you may want to hire a lawyer and get yourself and get a trademark. If you need help, feel free to contact us and we can guide you through the process as well!
Richard James, Private Investigator & Surveillance Specialist at Rivica Investigations also shares his experience of getting a trademark and also tells what you should do in case the trademark that you want is owned by someone else –
“Yes, I have tried to trademark my business and product brand. Overall, it’s been a pretty positive experience.
There are a few things you need to be aware of when trademarking your brand – for example, make sure you do a thorough search of existing trademarks to make sure your mark isn’t already taken. If it is, you may be able to negotiate with the current owner for the rights to use it. Other than that, the process is pretty straightforward and relatively affordable.
If you’re thinking of trademarking your brand, I would recommend doing it. It’s a great way to protect your investment and ensure that you have the exclusive rights to use your mark.”
#3. an entrepreneur shares her experience Fighting against Trademark Infringement ON YOUR OWN!?
Nakia D. Whittaker-Woody of KISS Virtual Services, a business that provides virtual assistant services to entrepreneurs, shares her experience of fighting against trademark infringement by a South African company.
In her words – “I went to research trademarking after an African company tried to use my business name. The cost was enormous and the process confusing if attempting to DIY. I was able to ascertain from the USTPO site that I could qualify to use a Law Student to assist me with the process pro bono. I opted for that option. The process has been great, had 3 attorneys thus far due to semesters, but they are professional, responsive, and transparent. I get updates and detailed emails with all that was done i.e., hours, billing rates for paid service.”
Now, in cases of trademark infringement, you need to file a lawsuit. The process can be tough and complicated. It has inherent risks to it.
That’s why, we, at PatentPC would recommend against doing it alone. Plus, if you fail the lawsuit, the cost of appealing it would increase and the risk would be more tilted against you.
However, if you wish to brave it out like Nakia, at least get some qualified assistance like she did and check if they are eligible to assist you in the process.
#4. The Learning Path to Getting Your Trademark Done!
“It is crucial to first evaluate whether trademarking is appropriate, especially for small business owners. My encounter with trademarking was not easy. I had to determine the type of protection I needed for my product and start the application process to register the mark. I learned that not every mark is registrable.
I was also advised that not every mark can be legally protected as it may not form the basis of legal claims. As a newbie to trademarks, I did not understand marks’ copyright difficulties and registrability.
I was advised to begin by establishing a mark format and determining how it would apply to my product then search the USPTO database to see whether another company had copyrights to the marks. Before applying, I had to provide the basis for filing.
As a domicile in the US, I didn’t have to use an attorney. However, I was advised to use a registered attorney to guide me through the process, making it easier. I applied and paid the processing fee, which was successful in registration.
I was shocked to learn that the processing fee is not refundable even when the registration is not successful. I was responsible for monitoring the application’s progress through the TSDR system. I received the approval of the application. After the approval, I have to maintain the registration through the issued certificates and enforce rights protection.”
#5. Don’t Let Cyber-Squatters Get the Websites
“In 2017 I trademarked my online relationship skills course called The Millionaire Marriage Club. I wanted to protect the name and the logo. The experience was easy using an online legal site offering this option.”
According to her an important piece of advice that she received was to “secure website URLs for all trademarks if possible. I wasn’t sure at the time how important that would be and wasn’t sure the extra expense would be worthwhile. I did secure the URLs for both www.RelationshipRehabShow.com and The Millionaire Marriage Club in various permutations. I bought those URLs early on and am glad I made the investment. Both URLs are serving me well with marketing and they also lend a level of support for the trademarks.”
This is actually very important and surprisingly most business owners miss out on it! If you do miss out, individuals may buy the website name, and then you’ll be involved in long and tedious litigation. In fact, this practice of taking over websites corresponding to trademarks is known as cyber-squatting.
If you want to avoid it, you better prepare in advance!
#6. The Steps in Getting a Trademark – Shared by an Entrepreneur!
Alex Haley, the co-founder at YardsNearMe shares what he did to get his trademark accepted by the USPTO –
“In my personal opinion, a trademark is an identification mark of the manufacturer of a particular product or service. Always keep in mind that only a legal entity or an individual entrepreneur can apply for trademark registration.
Before registering a trademark, I did a lot of research and extracted a good name for my brand. I visited the website of the Federal Institute of industrial property to register the business trademark, completed all formalities, and get the desired stuff. To complete the process, I did the following:
Filing an application on the authorized website with required details–
- My details (full name, age, address, the address of my organization,
- Trademark details (Content, image, slogan, punch lines). These should be unique and must not be copied from already registered companies.
- A list of products and services for which trademark will be applicable.
Submission of Documents
- Company registration documents,
- Bank details of my organization,
- My personal and company contact numbers,
- Trademark image and
- Acknowledgment of trademark fees.
After this, the relevant authority looked into my request, investigated it, and gave me the desired trademark ensuring that there is no other trademark registered with the same name/slogan/image content. “
#7. Learn to Use the USPTO Research Box
“The main thing to do before filing is making sure to do a little bit of research. The USPTO has a research tool and you need to do a few searches, not just for the exact name you wish to trademark, but also for names that are similar.
The USPTO will use the standard of whether the name is too confusingly similar to the consumer. So even though you may think something is very different from your proposed name, keep in mind the USPTO examiner may have a different opinion.
The research box is also a great tool to become familiar with what categories of goods and services you can apply for. See, trademarking is a very specific animal. You can only apply for categories you are actually using.
If you’re unsure what that means, just research a more popular brand name in your industry to see what categories they are trademarked in and this will help you file your application more easily. “
Wrapping it Up – Getting a Trademark by Yourself is Difficult but Do-able but there are Risks Involved
As you can see, getting your trademark done is a difficult but doable process. However, there is obviously risks involved.
The main reason why entrepreneurs try to do their trademarks themselves is that they don’t want to spend that much of an amount on an attorney or Intellectual Property Rights agent.
“I operated with an unregistered trademark for my side-hustle tea business for over five years until I could afford to hire an IP attorney to help me file an official application. I knew that I could file myself, but at the risk of doing it incorrectly, which is why I waited to hire an attorney.
In 2020, I entered a few pitch contests for my business and won $5,000 in seed money at St Pete Pitch Night. I used part of this money to get three separate applications started in December 2020.
Together with my IP attorney in Tampa, we applied for word mark protection for my business name “Embrew”, a trademark for the Embrew logo/icon, and one for my tagline: “Sweetened Artisan Tea Bags”. I paid around $1,500 for the three applications.
The attorney warned me that the USPTO office would most likely reject the application for “Sweetened Artisan Tea Bags” because the wording was too generic, but he thought he could provide evidence to them that it was a novel way to describe my product and get it approved.
It took 7 months to get a response back from the patent and trademark office, but when they communicated back, we were told that the Embrew word mark and logo/icon were cleared, but needed to be published for opposition in the Trademark Official Gazette (TMOG) for a period of 30 days to see if anyone objects to the application.
They did not approve the request for trademarking “Sweetened Artisan Tea Bags” and I decided to abandon the application rather than continue to pay the attorney to work on the response since it was unlikely to get approved.
I’m still using this descriptor for my product under my logo, but will just have to hope that someone doesn’t use the same one. My backup plan is to lean into my other tagline: “Ethically Sourced. Thoughtfully Delicious.” as I continue to grow.
I was officially awarded word mark and trademark protection 11 months after the start of the application.”
As such, as an entrepreneur, you need to make the call – should you try your hand at getting a trademark by yourself or should you hire a lawyer?
We, at PatentPC, do offer our services to businesses looking to get a trademark at extremely reasonable rates. If you need help with your trademark, feel free to reach out for a free consultation!