Your small business trademarks have an untold amount of potential value. Who knew 10 or 20 years ago that the Google and Apple brands would be worth tens of billions of dollars each?
Every brand has to start somewhere, including yours. That’s why it’s critical to protect your brands with trademarks. If you don’t, you could not only lose the opportunity to profit from their future value but also, you could get into a lot of very expensive trouble.
Fortunately, all of that trouble is avoidable. All you have to do is properly clear and register your trademarks. But that’s exactly where many small businesses set themselves up for problems and begin making small business trademark mistakes.
Rather than investing the time and money to protect their businesses and brands the right way, they use free (i.e. do it yourself) or cheap (i.e. legal document services providers) methods to search the availability of their business and brand names as trademarks and to register those marks.
It’s a recipe for disaster that has created an entirely new type of legal services, do-over legal services. This is a vertical that should not exist simply because if people got the help they needed to do things correctly the first time, they’d avoid the problems that create the need.
With that in mind, I’m going to teach you about common small business trademark mistakes in an effort to stop some small businesses from making them.
These small business trademark mistakes could cost you money. And I’m not talking about a small amount of money. I’m talking about a massive amount of money.
Let’s put it this way, the $500 or $1,000 you save today by going the do-it-yourself or cheap route to search and register your business and brand names could cost you tens of thousands, hundreds of thousands, or even millions of dollars in the future.
I’ve seen too many businesses forced to close their doors because they’ve made one or more of these completely avoidable mistakes. Don’t be another victim. Educate yourself and avoid these common small business trademark mistakes:
1. You registered your trademark but didn’t secure your name in URLs or social media profiles.
Once someone else registers a domain or snags a social media profile using your trademark, it can be time-consuming and costly to stop them.
Imagine if they start publishing content using a domain or social media profile that matches your brand name. If that content is inappropriate or confuses consumers, you could lose business. Develop a domain name strategy now so you can avoid this problem!
2. You never trademarked your business name.
Just because you registered your business name so you could start operating in your state doesn’t mean that you own the trademark.
You still need to register your business name as a brand name with the U.S. Patent and Trademark Office (USPTO)! Learn the difference between a trade name and a trademark, so you don’t make this mistake.
3. Your business or brand name is descriptive.
The more descriptive your business or brand name is, the less likely you’ll be able to trademark it. In fact, you might not be able to trademark it at all!
Learn how to choose a strong name that you can trademark before you fall in love with it and invest time and money into promoting it.
4. You assumed that since you made up a word or logo that you own it and trademark registration is unnecessary.
Nope. Even if you make up a word, you still need to register it as a trademark to be able to fully protect it and enforce your rights to it.
Common law will be on your side, but you still have to register your trademark if you want to collect money damages and recoup lost profits in an infringement lawsuit.
5. You searched your name in the USPTO database or on an online search site and found no matches, so you assumed it’s available for you to use.
The USPTO database is just your first step in conducting a trademark search. For one thing, it doesn’t include potentially conflicting marks due to common law.
Furthermore, an online search using other free or cheap service providers will give you limited results. That’s because these search providers don’t conduct comprehensive trademark searches.
There is a huge difference between a comprehensive search and any other type of search you conduct yourself or pay someone else to conduct for you. If you do nothing else, invest in a comprehensive search before you start using your name in the marketplace!
6. You think because your business or brand name includes your personal name (first or last) that you don’t have to register it.
Business and brand names that include your first or last name are typically considered to be descriptive and can’t usually be trademarked (although it’s not impossible).
A descriptive trademark is not distinctive, which means it’s weak and difficult to protect. See #3.
7. You assumed that your trademark covers your use of your mark for everything and everywhere.
Not even close! Your trademark only covers your use of the mark for the goods and services specifically described in your trademark registration.
This is why it’s so important to work with an intellectual property attorney to write the goods and services description section of your trademark application! Using a generic classification of goods and services won’t give you the protection you need and is unlikely to scale effectively with your business.
8. You’re not using your mark as it was registered.
You can only protect your mark as it was registered, so you need to use it that way. You should use the trademark symbol to put others on notice that you registered the mark.
But that’s not the only reason you should use the trademark symbol! If you don’t use the symbol, it could be a lot more difficult to collect money damages or recover lost profits in an infringement lawsuit.
9. You’re not maintaining your trademark.
Did you know you could lose your trademark if you don’t maintain it? First, you need to continue using it in commerce or you could lose your rights to it.
Second, you have to renew and update your registration. Between the fifth and sixth year and between the ninth and tenth year after you register your mark, as well as every ten years thereafter, you have to file specific registration renewal documents or the USPTO could flag your trademark as abandoned and cancel it. That means someone else could register it. If you want to get your trademark back, you have to re-register your mark from scratch.
10. You’re not monitoring and enforcing your trademark.
If you’re not monitoring your mark for potential infringements (both online and offline) and responding to those infringements to enforce your mark, then you could lose your ability to protect it.
Develop a process to monitor use of your mark online by doing regular searches using the USPTO database, Google, and social media. If possible, invest in trademark monitoring with an intellectual property attorney or use a third-party watch service provider like Thompson CompuMark or Corsearch that has access to far more online and offline databases than free or cheap providers offer.
Mistake Photo via Shutterstock
This happens. You get your trademark but you have to buy it off other people because they have already bought it. Better secure it before you even secure your trademark.
If you own the trademark, you don’t have to “buy it” from other people who already bought the domain. You have to take the appropriate steps to enforce your trademark rights.
I’ve heard a lot about trademark mistakes a lot of times and so far it is the common pitfalls of every business. Indeed, these mistakes that you mentioned should be considered by small business owners and they should definitely take actions to avoid it. In as much as business needs a name, it should be registered as well to be used freely in building brand awareness to the public. Once trademark has been registered, it’s a great way to promote your business anytime and anywhere you want. Also, as part of promoting business, i found an article at http://www.promomatting.com/6-ways-custom-branded-floor-mats-pay-for-themselves/ which suggests the relevance of custom-made floor mats. I’ve tried it and it’s truly worth it. Hopefully, more and more businesses would realize the true value of trademarks.
In Indonesia, you will see a very long bureaucratic process. Sometimes it makes our entrepreneurs lazy to take care of it.
Thanks Ms. Keller for your excellent explanation. Recently, I talked to a small business owner and suggested him to trademark his business name, but he shown his less interest. This actually happens when a business owner lacks information or unaware of future risk. They think no one will copy their business name or start business elsewhere. Thank you again for pointing out such mistakes and letting others know.
I was earlier running a business under proprietorship and now my partner has registered my business as trademark under his parent company. This was he is able to put the monthly expenses of my my company as his own.
But now I am concerned if can I later convert the company as my own sole proprietorship?