More often than not, the first question that a potential trademark client will ask me is, “Do I even need to trademark my brand name?” The answer that I universally give is – of course not! You can imagine the shock many people express when they hear a trademark attorney respond in such a way. But then comes the explanation…
There is absolutely no legal requirement that a company register a brand name with the United States Patent and Trademark Office (“USPTO”) prior to offering their products or services to the public. The real question is whether you should register your trademark with the USPTO which is entirely dependent on how much value you place on having the brand protected by a federal registration. For a company that intends on bringing a product to market to the public, there is almost always more than sufficient value to warrant seeking registration. On the other hand, for someone starting a professional services company (like an accounting practice) that has no intention of growing the brand beyond the immediate geographic area, then there may not be sufficient value to justify the time, effort and money it takes to secure registration.
My conversations with clients often quickly turn to helping them figure out whether they should bother seeking registration; that is, whether there is sufficient value in their particular situation. Given that I work almost exclusively with individuals and small businesses, I operate under the assumption that there is no money tree in the backyard. Even if there is a “legal budget,” it’s limited. As mentioned, if you’re bringing a product to market, then the value of having a registration immediately skyrockets. Why? Because you do not want another company to trade off of your goodwill by intentionally or accidentally using your trademark, and you do not want to accidentally (let alone intentionally) step on another trademark owner’s toes by using their exact brand name or even something that could be deemed “confusingly similar.” I commonly refer to these as the “offensive” and “defensive” perspectives:
Just like in sports, you need to have the ability to go after another party that is using your trademark unlawfully, whether that means a sternly written email from you, a Cease and Desist letter from an attorney, or – perhaps the last resort – a federal lawsuit for trademark infringement. In order to be in the best position possible to enforce your rights, you should have a federally protected trademark registration. Most people do not cherish the idea of attacking other companies in court or otherwise. I get it. But, that’s why we must also consider the defensive perspective–the side that often goes overlooked.
Again, just like in sports, you need to have the ability to defend your position. Imagine this scenario: you launch your “Wonderful Widget Granola Bars” to great fanfare and customers are blown away. You quickly move from selling online to selling at the local independent grocery store. Then, in a few months’ time, you’re picked up by one of the major national grocers. You couldn’t be more excited and, frankly, shocked by your rapid rise. Maybe you even get a phone call from one of the major manufacturers interested in a “partnership.” Simply amazing.
Well, what if the next call, email, or letter in the mailbox is from an attorney stating that she represents Widget WonderLand advising you that your brand is infringing on her client’s rights? Gut-wrenching. Stomach turning. Heartbreaking.
All of that success and goodwill that you’ve built up so quickly will shortly turn to dust when you are forced to rebrand – and that’s the best-case scenario. So, the “defensive” perspective is all about protecting your brand from being attacked by third parties with superior rights. The idea is to register your trademark so that you can sleep soundly at night confident that you will not be on the receiving end of such a nastygram.
In the end, it may be the case that there is insufficient value at the particular phase of your brand’s rollout to warrant seeking a formal trademark registration. But, until you talk through it with a knowledgeable professional, how can you be sure? It’s far better to have the conversation at an early stage so you understand the issue and its implications and are then able to incorporate the trademark process into your go-to-market timeline and strategy.
One thing that is for certain: while there may be no legal need for trademark registration, most brands that hope to achieve any measure of success will find that they should seek registration sooner rather than later if their goal is to have any measure of success in the marketplace.