This is the big question I get from creative entrepreneurs and small businesses. “Okay Joey, just be real with me. SHOULD I get a trademark?” My answer: probably yes! To kick things off, here’s a fun little thought experiment for you.
Imagine you’re on a plane to Hawaii. That’s right. You’re about to officially kick off a family vacation. You’ve worked hard for this break and you’re ready to enjoy it. As the wheels touch the ground, you swipe off your phone’s airplane mode. Out of habit, you open up your email app: it’s been a long flight and you want to check in one last time before you officially enter vacation mode.
You look at your inbox and your heart sinks. Those three dreaded words appear, all caps, in a subject line: “Cease and Desist” and the panic sets in fast. This email is from another brand with a similar name as yours and it mentions trademark violations. According to the email, you have thirty days to completely rebrand. So much for enjoying that vacation.
Instead of long days at the beach, you have glued to your laptop the whole trip. You hastily search for new name options, buy a bunch of domain names, make changes to your site and reach out to your business besties for help and support. You might read this and think it sounds too awful to be true, but this exact nightmare happened to a client of mine and I’ve heard similar stories.
Don’t worry, I’ve got you and in this article, I’ll help you think through the four questions you need to ask yourself to determine how best to protect your brand.
What’s The Worst Cease and Desist Letter I Can Receive?
Think about the time, money and effort involved in a potential rebrand. I know this isn’t exactly a fun thing to think about, but I highly encourage you to take a moment and really consider the possibility. Let me share my perspective here as a business lawyer who has worked with thousands of Independent professionals.
Out of all of the potential legal issues facing my clients, trademarks and branding rights tend to be the most common legal issues that actually pop up and create problems. And it makes sense: with so many people starting a business these days, it’s getting harder and harder to come up with names that aren’t already taken. We’ll circle back to this “crowded trademark environment” problem later, but the point, for now, is this: if there’s any legal issue that really deserves your proactive attention, it’s trademarked.
Trademark struggles tend to be the first significant legal issue a brand faces and boy can they be expensive to resolve. A rebrand can easily cost a business over $20,000. In other words, trademark problems occur often, early and at a real cost. I tell you this not to scare you but to emphasize the wisdom of considering the risk sooner rather than later.
What if I Don’t Have a Distinctive Brand?
My firm has talked to lots of photographers, Independent businesses and personal brands that just use their personal name as their business name. Or the business name is very generic and plainly describes what the business is about.
Let me be clear: I hear you. And many Independent business owners have told me that they’ve decided not to get trademarked because, frankly, an attorney told them they don’t need it. The logic goes something like: “Well, trademarks protect distinctive brands and there’s nothing particularly distinctive about my brand, so I don’t need a trademark, right?”
If you’re in this boat, consider this: you may be right, but are you being effective?
Imagine someone shopping down the “cereal aisle” of your industry. Think about trademarks as the packaging of your cereal box next to the other options. Are your customers and clients drawn to your packaging specifically? Or are you one of those cereals on the bottom shelf, maybe just bagged without a box and labeled with a generic name like “Wheat-O’s”?
You see, if you don’t have a distinctive brand, what that really means is that you don’t have a brand at all. You have a commodity business. According to your brand’s own packaging, there’s nothing special about your business that would attract a colder lead and make them want to work with you specifically. The more your business is merely a commodity, the more you have to have to compete on pricing to make sales.
Ask yourself these questions:
- What makes you different from others in your industry?
- How can you really highlight that difference in your branding (AKA your trademarks)?
In other words, “not needing trademarks” is possible, but it’s usually a sign of a larger branding and marketing problem. It literally pays to be a more distinctive brand. It helps you stand out from the crowd and identify your service offering as something distinct. Importantly, it shows that people are willing to pay top dollar to work with your brand specifically.
Pro Tip: Trademarks are a sign that your brand is a big deal and that it takes up space.
What Should I Trademark in My Business?
Now that we’ve established that there is or should be something in your business worth trademarking, you might be wondering what to trademark and in what order. This is a common topic my firm discusses with our clients. We generally recommend that you protect your brand elements in this order (but it depends):
- Business Name (Words Only): Your business name is likely your most valuable trademark. It’s smart to get that protected first, especially if it’s distinctive!
- Flagship Product Line or Service Offering: Do you have a popular product line? An online course? A podcast? A mastermind or high ticket program? A virtual summit? Those are protectable as trademarks as well.
- Slogan, Catchphrase or Motto: You will eventually want to protect these, even if they’re not your primary brand element. You want to be proactive about these trademarks so that another business doesn’t claim these in the future and force you to rebrand.
- Stylized Names and Logos: Most trademark applications protect the “words only” of the trademark. If, however, your branding has a particular stylizing or look to it, that can be protected as well.
- Future Changes: Are you considering a rebrand, a name for a new business or a slogan you want to start using? It’s possible to apply for a trademark under an “intent to use” basis before you even start using it. In fact, this is what our more established and sophisticated business clients do so that they can lock in trademark protections before they spend time or money committing to the brand.
While there is no “correct” order of what to trademark first and next, this general ranking of priority has helped give our clients clarity on what to focus on for now. If you really want to impress and get value from your lawyer, map out your own trademarks according to the categories above and ask them to share their thoughts with the list you came up with.
Am I an Accidental Infringer?
Let’s be real. There are more Independent businesses now than ever before. Last year alone, almost a million trademark applications were filed in the United States.
But did you know that, without trademarks, you have zero legal rights to your brand? We’re talking business names, logos, slogans, podcast titles and online course names. Lots of entrepreneurs don’t protect their trademarks until it’s too late.
Just because the name was available as a website or social media profile or even with your secretary of state as an LLC: it doesn’t mean you have the legal right to use it. If you don’t secure your trademarks at the national level, you could be accidentally infringing on someone else.
Here’s a quick guide for running a basic (and free) trademark search:
- Go to www.uspto.gov.
- Click on “Trademarks” in the menu bar, then under “Application Process” click on “Searching Trademarks.”
- Then click on the button that says “Search our trademark database (TESS).”
- From there, click “Basic Word Mark Search (New User).”
- Now you’re on the inside of a free searchable database of US trademarks. Think 1990s Google vibes.
- From here, you can type out your firm/business name, hit “Submit Query” and see what comes up.
Note that all listings will appear as DEAD or LIVE. DEAD means that the application was refused, abandoned or was once registered but no longer is. (AKA usually a good sign.) LIVE means either it is registered or the application is still pending (AKA potentially a bad sign).
If you click on any listing, you’ll see more information about the owner of that trademark and what that business sells. If the company sells something completely different and unrelated to your business, then it likely won’t be an issue even if it’s the same exact name.
In the trademark lawyer world, we call this surface-level search a “knockout search.” It can be really handy to run this quick knockout search before you get too committed to the name and build out a website, social media presence and other branding elements.
Keep in mind that this knockout search does not (and should not) take the place of a more detailed trademark search. The results from a basic knockout search do not guarantee that there aren’t conflicting trademark applications or registrations that could be an issue for you when you start using your mark or try to register your trademark. Congrats, you did it!
Answering these four questions will keep your brand protected. So ensure you’ve taken the time to:
- Imagine a cease-and-desist situation and its impact on your business.
- Level up your brand where appropriate into something more distinctive.
- Prioritize the order in which to protect your trademarks.
- Learn the basics of a free knockout search.
Whether you decide to take the next steps yourself to get trademarked or to hire a lawyer to do the heavy lifting for you, you can rest easy knowing that your most important asset: your brand is protected.
Ready to protect your business? Get our Protecting Your Business Ultimate Guide.