When to File Trademarks

23 07 2013

LawyerTrioThis blog article was written by attorney Scott Landsbaum, an attorney and business advisor to individuals and corporations with a focus on the commercialization of intellectual property. His clients include a broad range of companies, entrepreneurs, inventors, designers and artists in diverse industries such as toys, packaged food, apps, pet products, home and garden, apparel, jewelry, marketing and promotional services, health and beauty, and restaurants. Thanks so much for your taking the time to share your knowledge today. I’ve included a few comments at the end of the blog, as well.

A lot of you have been asking J’net about when you should apply to register your trademark, so I’m here to explain a few of the issues you should consider in deciding when to invest in the effort.  Of course, as with the timing of any other investment in your business, there isn’t any bright line rule about when you should file and the timing will depend on a number of different factors that are unique to each person.  In addition, you need to think not just about when to file, but also what products should be covered by your trademark. (This discussion assumes you have a studio name and aren’t simply using your personal name for your artwork. If you only use your personal name, then you’ll need to become very famous before being able to register your name as a trademark.)

In making these decisions, you should keep in mind what the registration process really does for you.  You obtain trademark rights in your name simply by using it in commerce.  By using your name in business – on your artwork, business cards, web site, licensed goods, etc. – you are creating a protectable trademark in connection with your actual business.  The three primary reasons you want to register it are (1) to obtain a broader geographic scope of coverage, (2) to expand the types of products your trademark applies to, and (3) to get better remedies and enforcement rights against infringers and counterfeiters.

Looking at just the issue of the geographic scope of protection, when you use your name without registering it, the protection you get is limited to the geographic area in which your name is known and you do business.  So if you are painting and selling your art at Funky Bastion Studio in Ojai (a name I’m making up), you could stop someone else from doing the same in Ojai, but probably not in San Francisco, Sedona, or anywhere else.  A federal registration changes that and gives you the sole right to use that name throughout the country for the covered product or service.  While this isn’t an issue if all you want to do is sell art out of your studio, it does become important if you want to extend your business throughout the country through a licensing program because you want to know that you have rights to your name throughout the country.

Keeping that in mind, the primary factor in deciding when to register your name is how much confidence you have in your business and what are your realistic projections for the next 2-3 years.  If you already have a deal or two under your belt or you have work coming out soon and you’re realistically optimistic that things are growing, then it’s probably time to apply.  If you’re just starting out and haven’t yet signed any deals, then it may be premature to start.  Of course, by not registering your name you run the risk that someone else might apply for the same name before you and keep you from using that name.  So you need to balance your desire to not invest too soon with your own comfort level at waiting.

In addition to deciding when to file, you’ll need to figure out what products you want covered by your application.  This is important because trademark registrations apply only on a product-by-product basis (Funky Bastion Studio could be registered for both art studios and hair salons by different people) and because the fees charged are on a per-product basis as well.  Going back to point number 2 above, if you’ve signed a new license for your artwork to appear on backpacks and you’ve never had your artwork appear on any before, you may want to register your name for backpacks to expand the product category scope of your protection.  In general, the broader the scope of protection you have, the more valuable your name will become.  But be careful about going too far.  While you may think you’re the next Andy Warhol and see your artwork on tableware, notebooks, iPad covers, and t-shirts, that’s four separate product categories and four times the fees.  That’s why I stress that you need to make realistic projections of where your business is growing and to file accordingly.

Finally, once you do decide to file an application, the best tip I can give you is to search, search, search before you do.  Get on the U.S. Patent and Trademark Office (uspto.gov) web site and search the database.  Get on Google and track down all the similar names.  The last thing you want to do is invest in the filing and then find out your name is already taken.

This information is presented for educational purposes only.  Always consult your own attorney about your particular circumstances.

J’net Comments: This information is applicable for art, design and character brands.  I would only add that in your planning and projections you need to think about how broadly (across what territories) you want to protect your trademarks. They are not only registered on a per-product category, but on a country-by-country basis.  So those new backpacks you are licensing in the U.S., Australia and the U.K. will require trademark registrations in that product category in three different countries (i.e. backpacks in the U.S., backpacks in Australia and backpacks in the U.K.).



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