The below article was written by Nellie Akalp for Mashable. A lot of good things to know below regardless if you are starting an Inn, Resort or any other type business… so I wanted to share. Thanks for the great article!
For a startup, intellectual property is often the most valuable asset. Yet, IP isn’t just about patents and inventions. It can also include your brand assets — everything from the company name to the logo and product tagline.
Trademarks help keep your brand ID safe, with the idea that no one else in the market can come in and use your brand or trademark for a similar thing. But how much do you understand about the trademark process? Here are the answers to 10 of the most frequently asked questions surrounding trademarks:
1. If I trademark my company/product name, does that mean nobody else can use it?
The main purpose of a trademark is to prevent confusion in the marketplace, ensuring that consumers will know who is behind a certain product or service. That’s why trademark protection only applies to a particular category of goods and services. Nike Inc. owns the mark on a variety of shoes, clothing, sporting goods, etc. But there’s also a Nike Corporation that’s involved in hydraulic lifting jacks and other heavy machinery. There’s really no risk of a consumer confusing those two companies.
2. What’s the difference between a trademark and registering with the state?
When you incorporate, form an LLC, or submit a DBA (Doing Business As) for your business, you are essentially registering your business name with the state. This prevents anyone else from registering a similar name for a similar business type in your state. The key difference is that this act does not offer any kind of protection in the 49 other states; that’s where federal trademark protection comes in.
3. When is the right time to trademark our company name?
You should lock up trademark rights for your company or product name as soon as possible by submitting an intent-to-use trademark application. This ensures that your brand is protected once you begin commercial sales. In addition, a comprehensive trademark search usually accompanies the registration filing. This search will ensure that your mark is available and you aren’t accidentally infringing on someone else’s mark. You definitely don’t want to be on the wrong end of a trademark dispute.
4. How long does it take to get a trademark?
The registration process can take anywhere from nine months to several years, although most applications are completely processed within a year. The length often depends on the complexity of the mark and any conflicts or legal issues that arise while the U.S. Patent and Trademark Office examines your application. Once you file your paperwork, you are given a receipt and your filing date is marked. In terms of future trademark disputes, the earlier your filing date, the better.
5. What class should I choose?
When you apply for a trademark, you need to specify the particular goods or services that you are using your trademark with. There are 45 different classes to choose from. Software traditionally falls under Class 9 “Electrical and Scientific Apparatus.” The USPTO website provides a handy search feature to help you identify your class. For example, enter “beer” in the search field, and you’ll see that “beer” is class 32; Non-metal taps for beer kegs are class 20; and beer pumps are 7. If your mark is used on different products, you may need to file trademarks in multiple classes.
6. How long is a trademark good for? How long does a trademark last?
Trademarks today have a 10-year term. Once that term is up, you can renew a registration for another 10 years, and there’s no limit to how many times you renew the trademark. As long as you keep filing your renewals, along with your Declaration of Use forms, you can have a trademark as long as you’d like.
7. Should I register my company’s name or logo?
You can’t register your company name and logo in the same application, so many businesses will submit multiple filings — one for the company name, company logo, product name, product logo, etc. However, the reality is that many small businesses and bootstrapped startups are working with a limited budget and prefer to just register a single trademark.
If you can only do one trademark registration, you are probably best off registering your business name with a “standard character claim.” This means that your trademark broadly covers your name regardless of what font or stylistic elements are used (for example, no one could use your company name with a different font or lower case instead of upper case letters). But keep in mind this doesn’t offer protection for the design elements of your logo.
8. Can I trademark my name?
Yes, particularly people whose names are also their professions like actors or designers. If your name also identifies your business, you should consider trademarking your name.
Generally speaking, a personal name can be trademarked if it’s considered “distinctive”. The more common a name, the less likely your trademark application will be approved. But even an unusual name is no guarantee that you’ll be awarded a trademark; just ask Jay-Z and Beyoncé who have been struggling to trademark their baby daughter Blue Ivy’s name.
9. Can a trademark help me get a domain name?
Yes. Under the Anti-Cybersquatting Consumer Protection law, a trademark owner can sue for damages and recover a domain name when someone is squatting on a domain name that’s identical or similar to their trademark. For example, Morgan Freeman trademarked his name so he could take back the domain name www.morganfreeman.com. To do this, you need to prove that the person has been using the domain name in bad faith (i.e. to make a profit off of your brand).
10. What happens if someone else uses my trademark?
If another company is in a different type of business than you, you may not have legal grounds to stop them from using your mark. As the owner of a trademark, you can stop someone else from using your mark when it’s being used on competing goods or services, and when consumers would be confused by their use of the trademark.
If you believe someone is infringing on your mark, an attorney will first send a cease and desist letter on your behalf, demanding the other user to stop using your mark. If that’s unsuccessful, you can file a lawsuit (most likely in federal court) to stop the use. In many cases, you can also sue for money damages from the user. In fact, legal recourse is the biggest advantage of registering your trademark.