Updated: Aug 10, 2021

Everyone has probably heard the phrase, “There is no free lunch,” at some point in their life. While this statement is not 100% true, as there are free lunches here and there, you should probably not be searching for a free way to protect your brand because you may come away with only protecting 1/50th of that brand. Let me explain.

If you want a low cost trademark or no cost trademark, you can obtain your trademark at common law, but I encourage you to reconsider because what may be a cheap trademark in the short term could cost you in the long term.

A common law trademark exists by:

1. Starting your brand but make sure this brand name trademark is not being used by anyone else for similar goods or services;

2. Hold your brand out to the public as a trademark (preferably a term that is arbitrary, fanciful, or suggestive but not descriptive);

3. Actively use your trademark in the goods and services for which the trademark is intended; and

4. Put the really neat TM symbol beside it to put everyone on notice that your term is special.

This rough list represent criteria that create a “Common Law” trademark and is not completely inclusive of everything you can do to solidify your common law rights. This common law trademark may possibly be enforced under 15 U.S. Code § 1125, which broadly provides federal protection for trademark infringement and even dilution of the mark. While this is the only “Free Trademark” that I am aware of at the moment, this is really not the option you should take when starting your brand or even preserving the brand you have maintained for many years.

When you try to get something for free or to take the cheap trademark registration route, it may come back to haunt you in the long run. For instance, if you have an e-commerce business and believe a common law trademark is all you need to protect your amazon brand, you will soon find out that a registered trademark is required to be placed on the amazon brand registry. Second, common law trademarks are generally only good for geographical use of the trademark with exceptions (for instance, if you are using the trademark across all 50 states, then you may have broadened your protection at common law than just your region or state). However, when I say you may have 1/50th of the protection, I truly mean you may only have the protection within your state or region and not across the other 49 US States since you selected the common law trademark route.

One of the biggest issues with relying on common law rights is the fact that you may not be the first active user of the trademark and could be actively engaging in trademark infringement under the Lanham Act. A benefit of going through the trademark registration process with an attorney is having someone conduct a comprehensive search of the USPTO Trademark Search Database and across multiple mediums for other common law trademarks. If you do not have a trademark attorney nor want to hire a trademark attorney, registering your trademark with the USPTO will at least give you a little insurance as to whether or not your mark infringes on a registered mark because it will be examined and then have to pass through the mandatory trademark opposition period. Obtaining trademark registration with the USPTO also provides constructive notice to any third parties that you are the first user of this trademark in commerce. However, even after registering your trademark, someone could still try to have it cancelled if they have prior common law rights, but we will not go there for this discussion!

You can certainly trademark your brand for free by satisfying the requirements for a common law trademark. However, this practice does not go without risk, issues may arise down the line and you may forego numerous benefits of USPTO Trademark Registration.

If you are still wondering which way to go with trademark registration, how to trademark a brand name or how to trademark a logo, contact Baroody Law today for a consultation with a trademark lawyer so the stress of brand registration can be alleviated.

Updated: Aug 15, 2021

Starting a business is unfortunately not as simple as going to a website that permits a quick filing in the state of your business, submitting a minimal fee, and hitting submit. Sure, this is a very common way many business owners file to open their business. I am not saying this is always incorrect. However, I am saying there are many considerations to opening a business that can be easily overlooked if you are under the impression everything is fine as long as you your LLC or other entity is formed. You should always make sure your needs and the needs of your future clients are going to be effectively taken care of when opening your business. This is why consulting with an Attorney who can review the big picture is important.

Here are five other considerations you should think about when opening a business:

  1. Why are you starting a business? This is a question that can sometimes be brushed off and overlooked. Starting a business is hard. Running a business is more difficult. Staying in business is the most challenging part of all. Make sure you are ready to open a business, have a plan ready to go, and know what you are going to do when times get tough.

  2. Have you researched the business entity you are going to choose or are you just choosing an entity because everyone else uses the same entity? These days, limited liability companies ("LLC's") are all the rage. So many people believe an LLC is all they need to have a successful business. While it may help protect the business owner from personal liability if they are not grossly negligent in the operations of the business, some businesses will benefit from a standard corporate form. But if you are selling paper clips and only intend to make $100 a year, the benefits of opening an LLC do not outweigh the burdens and costs associated with opening and maintaining an LLC or standard corporation.

  3. What tax designation is best for you? If you do choose an LLC, you are considered a disregarded entity by the IRS. Often times S-Corporation status or C-Corporation status is chosen for various reasons related to how your business will be taxed. It is advisable that you consult with a tax professional to determine what is best for your situation. However, generally, an S-Corporation is great if your business is super small with less than 4 partners. A C-corporation is better if your business is larger, if you want to have multiple shareholders, and if you do not want the profits to be counted as personal income.

  4. Can you use the name of your business? Aside from conducting a state business name search to determine if your business name can be used in the business state, you need to conduct a common law trademark search and USPTO trademark search to determine if there are prior rights to utilize your business name for the same or similar goods or services. A Trademark search is often overlooked when starting a business. You may say that you will worry about a trademark later on in the process. This can be a fatal mistake in many instances which will require backtracking, rebranding, and many tears later on for your business.

  5. Do you have terms and conditions, a privacy policy, and appropriate payment safeguards for your clients? So, you start the business, have your EIN, have a bank account, hire a great website freelancer, and get everything going. You may have hired a US Trademark Attorney like myself to conduct your trademark registration. However, now you need to think about the story of how your customer will come to your business, make a purchase of your product or services, receive these products or services, pay for these products or services in a secure platform, what information will be transferred between both yourself and the customer, and how this arrangement will end. There are other considerations but these are the basics. There is more to this analysis than simply choosing to infringe the copyright of someone else's website by taking their terms and conditions and modifying them to fit your business. You need strong terms and conditions that are truly customized to fit your business, to protect your interests, and to communicate clearly and without too much legalese for your customers. Remember, the easy template online may be cheap (or free) but it does not necessarily equate to solid protection.

Updated: Aug 15, 2021

Filing for trademark protection is not to be taken lightly. Even after you file, it is important to then enforce your protection after it is granted. Before you submit your application, let me provide you with five key considerations.

  1. Are you using the proposed trademark in commerce? If you are not using your proposed trademark in commerce, the application you or your US Trademark Attorney files will be 1 (b), intent to use, unless you are filing under a foreign application status. In commerce means that you are actively using the trademark on the goods or in the services listed in your application. An example of use in commerce is you have a trademark for candy, then you need to have the goods in a retail store, online if that is what you specify or both physical and online, with the trademark preferably on a tag or product logo attached to the candy. However, filing an intent to use means you intend to use the goods or services in commerce. One question to ask yourself is how long it is going to take for you to get your goods or services in commerce. If your trademark is registered, you will need to file an allegation of use within 6 months or else an extension may need to be filed. Absent an extension, if you are not using the mark within 6 months of being granted the trademark in what is called a "notice of allowances," your trademark could be placed on abandonment status.

  2. Have you conducted an appropriate search to ensure you can use the brand name or logo in which you intend to trademark? I already have a post on properly conducting a search, so please read it for further details. However, if you have not conducted more than a USPTO trademark search, I strongly suggest you pause and get on Google, TinyEye (for a reverse image search of your logo) facebook, pinterest, etc. and make sure no one else is using your trademark in the same or similar goods or services. Believe me, it will save you heartache and possibly dollars down the line.

  3. Are you prepared to pay the price for defending your trademark in an opposition proceeding? In the event your trademark makes it within 10 feet of the end zone and is published for opposition, you need to determine if this is something you are ready to defend in case someone comes to challenge your rights to register the trademark. Just because a trademark examiner does not find an issue does not mean someone else with standing to file an opposition may not oppose your trademark. If your trademark is opposed, it can cost you thousands of dollars unless you defend this yourself. A trademark opposition proceeding is similar to a federal court proceeding, so filings, discovery, and a hearing are all considerations you need to think about. You may not hear about this when going through a minimal fee, online box store trademark filing solution.

  4. Do you even need a trademark? You need to determine why you are filing. You may be filing because you truly want to protect your brand name, your brand is going to dominate your market, and you want extra insurance in case someone else tries to use your brand. However, if your reasons are, "a friend told me I should do it," or "I think the TM or R symbol is cool and I want to use it," you need to pause and contact a trademark attorney like myself. If your brand name is descriptive like "Grass Cutting," for a lawn maintenance company, perhaps a trademark is not the best solution. However, if you have a unique name, perhaps a made up word, and this is going to be what defines your goods or services, then a trademark can definitely be beneficial so that average consumers are not confused as to where these goods and services originate. If you want to file, a holistic review needs to occur and I strongly suggest you reach out for a free consultation to an affordable trademark attorney like myself or other firms that provide more than a link to grab your payment!

  5. Are you even using the proposed trademark in the correct way to be a trademark? Just because you like the word and believe it is special to your business does not mean it can and/or should be trademarked. One very common example is the following: Company ABCDEFG sells T-shirts. These T-shirts have a unique phrase on the shirt. These T-shirts are then sold on a platform such as Amazon. The phrase has no independent meaning, it is just on a shirt and you want to profit from it. In my opinion, this is called an ornamental trademark and may result in your application being denied. This is not a strong usage of the proposed trademark at all. However, if ABCDEFG is the company for a band called ABCDEFG and this band is selling shirts with ABCDEFG on the shirt, it would be more than an ornamental trademark and would be used in a manner warranting brand protection. See the difference? To determine if your proposed mark is even being used as a trademark, ask an Attorney.

There are many more considerations when filing a trademark application. Some considerations could even have implications if not thoroughly considered! Take your time, ask someone who practices trademark law questions. Avoid going for the cheapest fee and make sure you are getting the best advice that takes your past, present, and future interests into consideration before submit is selected on your USPTO Trademark Application.

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