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  • Writer's pictureDEBORAH MORTIMER

Common Trademark Myths and Misconceptions


A trademark can be registered by anyone, even if they’re not in business or don’t intend to actually use it.


This is a common misconception. A requested trademark MUST be connected with a product or service YOU offer or intend to offer. That is, even if you have a great idea for a brand of apparel, you won’t be able to obtain trademark registration and thus complete protection until your brand of apparel is actually sold in commerce.


Trademark registration means you legally own a particular word, phrase, symbol, or design and can prevent others from using it in every context.


If only this were true, but sadly it isn’t. Trademark registration doesn’t afford you rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services. Therefore, while a brand may be the registered trademark for various goods and services associated with the foodservice industry, the registration doesn’t prevent a jewelry business from using the same brand name.


I own the domain name for my brand, so I’m protected.


Wrong. Domain ownership is not a trademark. It just means you own the domain with your chosen extension. Plus, ownership isn’t even exclusive. For example, let’s say you own a gym with the domain jumpingjacksgym.com. Ownership of that domain does not prevent another gym in a different market from purchasing and using the domain jumpingjacksgym.net or even jumpingjacksgym.biz. Owning a domain can be a tip-off that your business exists and is still operational. Still, trademark registration is the only way to protect your brand and claim exclusivity in your market.


The additional measures that a registered trademark owner can take to protect their brand's domain. Contact us to learn more.


Using the symbol ™ after my brand is all the protection you need.


This is a huge myth. The ™ symbol has little meaning and offers no legal national protection for your brand. It can be used by anyone whether a trademark application has been filed or not. While it can be an indication of one's intent to file or pending application, the only real symbol of trademark registration and protection is

®.

Using the registration symbol when your brand is unregistered and without the approval of the USPTO can be misleading and deceptive to consumers and leaves you open to allegations of fraud.


You can’t apply for a trademark if your business hasn’t been legally formed (LLC or corporation).


Business formation is not a requirement to apply for trademark registration. The only requirement is that the brand must actually be used in commerce. That is, the goods or services you provide bear your brand name. Or if your business is not yet active, it intends to provide goods or services bearing the brand.

But isn’t LLC or corporate formation enough?

LLC or corporate formation of a business is done through the secretary of state of the state in which the business is formed. Unfortunately, the secretary of state of all fifty states do not converse with each other. Therefore, there is nothing preventing another business from registering the same name as your business in another state. Trademark registration identifies your brand and the goods and services you provide nationwide. It also puts other businesses on notice that attempting to use your brand or something confusingly similar is a direct infringement on your trademark rights.


Why should I hire an attorney to process my trademark application? Can’t I just use one of the popular (and much cheaper) online services?


While an attorney is not required to file a trademark application with the USPTO, there are many reasons why seeking the help of an attorney can save you time and money in the long run. First, a skilled and experienced attorney can significantly increase your chances of securing trademark registration than if you were to file it on your own. A recent study by Stanford University found that only 40% of filing done without an attorney were registered compared to 60% of applications filed by attorneys. That statistic has been consistent.


A clearance search of your mark is an essential first step in the application process. This comprehensive search covering national, state, and common-law (social media and domain) databases is done to search for potential problems you may face using the proposed mark. An attorney will review and provide an in-depth analysis of the search in an opinion letter detailing the likelihood that your application will be successful. You will also be advised of potential risks to your application as well. An attorney can provide recommendations and brand strategy to offer your business the best chance for protection.


Online trademark services do not provide these needed services. Online services that promise trademark registration, often for a nominal fee, are nothing more than document processing companies. That cheaper fee does not include a comprehensive search. In fact, your application isn’t being processed by an attorney at all, despite what some of these services’ misleading names might imply. The truth is, you get what you pay for. So, after your application is filed, whether it gets registered is left up to chance and the USPTO examiner.


Without a proper search and a skillfully crafted application by an attorney, you run the increased likelihood that your application will be challenged or refused for numerous substantive reasons by the USPTO. Responding to such challenges can be quite costly. The saying goes, “Prevention is better than the cure.” In this case, it can be a lot cheaper.



This blog does not constitute legal advice and does not establish an attorney-client relationship. If you need legal advice, please contact Mortimer Legal, PLLC directly to discuss what we can do for you.

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