Okay – so this is definitely becoming a hot topic with entrepreneurs! As a business owner, it’s important to make sure our business name isn’t infringing on the rights of others, but also to understand the basics of how to protect our business name and other intellectual property. If this is you, and you’ve been starting to think about how all of this stuff works, today’s legal chat is for you. Let’s dive into trademarks.
First: What IS a trademark, and when can we use trademark law?
A trademark is a word, symbol, or logo legally registered with the U.S.Patent and Trademark Office, or “USPTO” or established by use that is used in connection with your brand and business to build consumer awareness, and represents your business or company. So basically, your business name, your logo, a tagline, course or program name, anything along these lines is something that can be protected by trademark law (notice I said can – there’s more to come!)
How is this different from copyright law?
There is a LOT of confusion around what trademarking is, what copyrighting is, and when to use what. First, these are NOT interchangeable – copyright laws and trademark laws protect two separate things, and if you trademark something, you aren’t also copyrighting, etc.
Copyright laws protect original works of art that are fixed in a tangible medium. All this means, is that you cannot protect ideas or concepts with copyright law, but you can likely protect your original work, as long as it’s written down or put into physical form in some way. Think books, paintings, worksheets, course modules or slides you’ve created for your business, the way your website looks, etc. Of course, there are exceptions here as well as far as what is and is not protectable by copyright law, but let’s just stick to the basics here!
Do I have to register a trademark to gain protection?
Here’s where it gets trickier – NO. While filing a formal registration is the best way to ensure your brand is protected, you do get some rights simply by using the name in connection with your business. Long story short, the U.S. is a “first to use” system, rather than a “first to file.” So essentially, using the mark in connection with your business allows you to claim certain aspects and ownership rights of the name, as long as no one else was using it first. If someone comes along and registers your business name with the USPTO, they wouldn’t be able to prevent you from continuing to use the name, since you used it first. Conversely, registering a business name that is already being used by someone else but hasn’t been registered won’t give you superior rights to the name, so don’t waste your time and money!
What can and can’t be trademarked?
Essentially, without getting too far into the legal weeds here, trademark law is designed to allow business owners exclusivity to use their mark in the category for which their products or services are in, as long as the mark does not prevent others from describing or explaining their services. So, in determining whether your mark can be registered, there are few steps:
First, can your mark be protected? In general, marks that are generic or “merely descriptive” of the services they provide are NOT eligible for protection. This is important, as many people get caught up here. What this is saying, is that if your business or course/program name simply describes your services, you won’t be able to trademark that, as you can’t gain exclusivity over a name or set of words other people need to describe their business. For example, words like “health coach” “business coach” “mindset coach” – these are all descriptive/generic and would not be protectable. If your business name simply describes what you do or what you sell, this will likely not be protectable either. Same goes for a course or program name – if the name describes the course, the transformation, or the product in a way that someone who hears it would have a pretty solid idea of what you do and what you’re selling, you may not be able to protect the mark, as the USPTO will find it “merely descriptive” of your products or services.
Second, what categories can we protect it in? Once you decide that your mark is not descriptive or generic, and likely eligible for protection, you want to assess the classes or categories you are currently in. For standard trademark applications, you can only apply for protection within categories you are already using the mark in. So if you’re a business coach and want to protect your business name, you would likely choose the class/category that outlines online education and entertainment, in the fields of [insert what you are doing].
Do I need an attorney to do this??
Many will tell you no, ALL IP attorneys will tell you YES. Not because we want your money. Here’s why. This is a very intricate process, and one that I HIGHLY recommend you hire an attorney for. Can you get lucky and complete the application yourself without an attorney? Totally. Will you likely go along blissfully unaware that your application may be lacking/leaving you exposed, and not including everything you need it to include, because you didn’t work with a legal expert? Also yes.
You can absolutely attempt to navigate the USPTO website and application process yourself, with no legal assistance. The result I usually see here, is an application that at some point in the process needs to be redone or heavily edited by an attorney, in order for it to pass the examining attorney’s desk. If it does gain approval and become added to the register without an attorney’s help, often times the application does not actually say what the business owner needs it to say, and the business owner has spent the money in completing an application that does not actually protect the mark.
There are several services out there as well, who will help you file the application for a fraction of the cost it takes to hire an attorney. These services do help you navigate the application itself; however, the big key here is that most of them do NOT help you from a legal analysis perspective. So while they will help you make sure the actual application is correct, they won’t tell you if you are actually protecting your business properly, if you are applying in the right categories, or if you are currently looking to apply for a mark that has already been registered and cannot be protected.
Hiring an attorney to do the application for you will likely run somewhere around $1,500-$2,500 plus the application costs. It is definitely an expense, and something many people try to skirt in order to save money. However, when you get to the point as a business owner where you want to trademark and protect your name, logo, course, etc. you want to make sure you’re doing it right, and actually protecting what you are working hard to build. Laying down the extra cash upfront to ensure your application is done right, you’re actually protecting your mark, and you’re receiving accurate legal advice is completely worth it in my book. Especially if you’re making $5-10k a month or more. It’s a worthy business expense if you ask me.