Trademark or Register, or both? What are the differences and advantages?
Any thoughts?
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Aug 29, 2013
It depends on how and where you are using the trademark. Federal registration is only of real benefit if you are selling a product or service in interstate commerce. Common law use of the TM symbol does not cost anything and is always a good starting point. Please contact me at kmgrasso@bioipjd.com to discuss further. I am an experienced IP attorney.
Jan 25, 2013
Using a mark to identify a good or service is subject to the claims of a third party that your mark as used is likely to cause confusion with their mark. By the time that claim is made, and if the claim is correct, you would be required to stop using your mark on very short notice and thereby cause you significant damage. I recommend you contact someone like our firm to have a comprehensive search performed and analyzed. Use of a mark, where you have the rights, gives you those rights only in the actual locations you have used the mark and nowhere else and only to the extend that you advissible records proving that use before an infringer or someone claiming to have superior rights. Federal registration extends those rights nationally and provides other significant benefits.
To find out whether or not a search and/or federal registration should be done in your situation, I recommend you contact us for a consultation. Information about our firm will be found at www.furgang.com.
Jan 24, 2013
It will also depend on the strength of the mark you want to register. The less generic the better.
Jan 22, 2013
Margin. Isn't that the object of brand? Brand enables an entrepreneur to conjure scarcity out of thin air. Frank Perdue was just a seller of a commodity product - chicken - before he persuaded us that a "PERDUE" chicken was not a chicken.
You want to brand your products. You want brands that are distinctive and protectable. Once you have distinct and protectable brands, then you want to protect them.
Protection is cheap. To clear a mark, you should budget $2500 for a $675 search from Thomson Compumark and a $1800 legal opinion. (You want the opinion for insurance on the off chance you are sued for infringement, you use the opinion to show you are not a willful infringer.) A U.S. trademark registration is about $2500 soup to nuts. That is $925 for the application including the government fee for a single class. (more classes cost more). The rest of the $2500 is eaten up in prosecution. The result is a mark you can use for as long as you want and a registration for 10-years. (There is a declaration due in year 5 that costs another $800). Show me a advertising campaign you can do for like money over 10-years!
On the international front, you can register a mark in most countries for about the same money. Registration in India is cheaper. Registration for the EU is more. Japan is more. I've registered marks in about 70-countries.
There are some do's and don'ts. Obviously, registration is not free. Ten registrations in the U.S. becomes 700 registrations in 70-countries. I was doing an audit for a large building materials concern with essentially two products and was surprised to find 300 Canadian TM registrations. The cheapest approach is a house brand approach like 3M. There you have a strong house mark and many generic descriptors. That focus on the housemark improves consumer knowledge of the house brand and decreases overall TM cost in most instances. If you need a more sophisticated brand architecture, that do that but think many times before adopting a new brand. Have a reason! Remember that once you have a distinctive, protectable brand, then work hard to build a reputation worth having.
Good luck! If you have questions, then drop an email to jmfaier@faier.com. I have 22-years in trademarks and patents working for international companies.
Jan 22, 2013
The advantages of registration far outweigh any disadvantages you may encounter in enforcing your rights. Registration is prima facie evidence of ownership and validity, it operates as a deterrent to others who might use the same or a similar mark, it gives you nationwide rights and priority (whereas reliance on "common law" use confers rights only in those areas where you do business and/or where you can prove the existence of goodwill), it puts you in a far better position when attempting to chase cyber squatters and other online pirates, and for companies that sell goods it puts you in position to work with ICE to prevent the importation of infringing goods. To get more technical, after five years of registration and use a mark can become "incontestable", meaning that it cannot be challenged any longer on several legal grounds, including on grounds that it is merely descriptive. That can be a huge advantage if you do, in fact, use a descriptive mark. Finally, applying for registration in the U.S. also gives you a six-month "priority" window in which you can file in foreign jurisdictions and get the advantage of your U.S. filing date. From a business perspective, potential investors in your business are likely to look at your protection scheme when assessing the value of your company. To the extent that trademarks are at all important, having applications/registrations in place can only help. As for the risks described in some of the other responses, a good attorney should be able to help you navigate those at minimal cost.
Jan 22, 2013
Registration can be a double-edged sword. When I registered a mark and it was published for opposition, someone made a frivolous claim that he had used a confusingly similar mark before I did. I won the dispute, but that was $50,000 later in legal fees.
Also, enforcing registered trademarks isn't as simple as it sounds. If it turns out that someone discovers they used your mark, or one considered "confusingly similar" then they can challenge your registration. Every time we do a takedown for trademark infringement, it's at least $500 in research to make sure the infringer never actually used it before I did.
Jan 22, 2013
The 50K number seems very high. I am not sure of the specific facts, but typically, it has cost me less.
Regarding enforcement, if you don't see value, then don't enforce. Otherwise, view it like maintenance. My old car costs me around 1500/yr to keep it running. That is the price of getting the value out of the asset.
Jan 21, 2013
I always tell people the same generic advise. Your trademark rights arise from use, so use your mark. Registration gives you several significant advantages. Hare are just a few: an examiner in the USPTO searches the mark, you have given notice to others, usually, in the registration process a search is performed highlighting potential infringement risks, Because registration costs money, it leads to better planning and more thought.
The thing about trademarks is they acquire value later and, as such, protecting them now seems unimportant. This is like stepping on saplings because they are small. You will never have a great tree if you do not appreciate that it grows form a seed.
I wrote a blog about protecting marks, but some of the same points apply to registering them.
http://www.gofreedmanblog.com/protecting-trademark-rights-cost-benefit-analysis/
Great advice and information. I was asked a question yesterday by an aspiring wantrepreneur, wished I had read your response prior to today.