Have you wondered why you’d register a trademark? Well, picture this: You’ve spent years building your business from the ground up, pouring your heart and soul into creating something impactful and unique. But all your hard work may be at risk. Without proper legal protections in place at the right time, your business could be vulnerable to copycats, intellectual property theft, and expensive legal problems.
That’s where trademark registration comes in.
At the AWB Firm, we receive trademark questions daily, and the most common ones are:
Why should I register a trademark?
Do I need to?
What are the benefits of registering a trademark?
Let’s start with what a trademark is, and then I’ll explain the seven benefits for why trademark registration may be a priority in your coaching or creative online business.
DISCLAIMER: Everything that I'll be talking about in this article is not legal advice. This is just information and meant to get your wheels turning. It will help you think about things that you're facing in your business right now or might face in the near future.
What is a trademark?
Here’s a really quick primer:
A trademark helps customers know where the product they are buying comes from.
The whole premise of trademark law is to help consumers figure out whether they're buying the right thing. It helps to identify goods and services as originating from a particular source.
Think about it like that and everything else in this article will make more sense.
Why register a trademark?
We often talk about trademarks as protecting a brand from copycats, since copycats are not the source of their product or service.
One example would be online icon Marie Forleo. When you hear her name you immediately think of things she sells, like B-School. That course name is a registered trademark that shows her company is the original source of the content. If anyone else tries to use that name for a course, they can’t because it’s protected by a trademark.
Do I need to register a trademark?
Trademark law is meant to protect consumers and help us make easy, quick decisions about things we purchase. However, not all businesses need to register a trademark.
I go against the grain when I give advice about trademarks, because I firmly believe the value of a registered trademark truly depends on your stage of business.
When should I register a trademark?
If you’re just getting started and the budget is tight, you might consider waiting to protect your trademarks until you know that you’re going to be in business for a while. Test your offers and see what resonates with your audience. Once a brand starts generating an income, then you’ve got something worth protecting, and that’s when you’ll want to look at registering it more seriously. Trademark registration can be an expensive and considerably long process that’s not always necessary when you’re in the “testing and changing” phase of starting your business.
What can be registered as a trademark?
Trademarks are not only words. They can also be a design element like a font or a logo.
For example, when you see a bold pink crustacean and the wordsTalking Shrimp, you immediately associate it with Laura Belgray. There is a certain expectation that comes to mind because you recognize that logo. You've seen it before, experienced her humor and wit, and it immediately connotes in your brain a certain type of quality. You know what you're getting.
Trademarks can be a variety of things, but the thing to keep in mind is that it indicates the source of a product or service. Things like:
- a name
- a logo
- slogans or taglines
- a color or combination of colors
- even a sound
With those basics under your belt, here are seven benefits you receive when you obtain a federal trademark registration from the United States Patent and Trademark Office (USPTO).
1. You are getting nationwide protection.
There are three levels of protection in trademark law. The first and most basic is common law trademark rights. You get those trademark rights in whatever territory or region you’re selling your product or service, just by using a particular brand or a logo in connection with promoting that product or service.
The second level is state registration. This offers you a little more protection than common law, but only protects you in the state or states where you actually sell your products and services and register your mark. I don’t usually recommend state registrations, but I talk about state registration in Season 3 Episode 72 of the Legal Road MapⓇ podcast if you want more details.
The third level is federal registration, which offers the most protection. If you have a strong product name, company name, slogan, or logo, protecting it with a federal trademark registration gives you the most rights.
Common Law Trademark Rights vs Federally Registered Trademark Rights
It can be complicated to decipher the difference between common law and federally registered trademark rights. To make it simple to understand, let’s use the AWB Firm as an example. I live and practice law in Chattanooga and that’s where the AWB Firm is as well. If I had clients just in Chattanooga and perhaps two other counties in Tennessee, my common law trademark rights would only extend to those areas where I'm actually selling my services.
If someone starts another law firm named the AWB Firm across the state line in Georgia, I cannot go after them under common law rights. I wouldn’t have any trademark rights in Georgia because I'm not practicing law there, not marketing my services there, nor am I serving clients in Georgia. So my trademark rights are going to be restricted to the area where I'm actually using them.
Once I receive a federal trademark registration, though, that gives me nationwide protection. Even if I'm still only practicing in Tennessee or a few additional states, I still get trademark protection across the entire U.S.
To be clear, you could have national common law rights if you are selling a product in all 50 states. You would obtain common law rights in each of those states. However, those common law rights are not as protective as a federally registered trademark.
Key Requirement for a Federal USPTO Registration
Not all federal trademark applications are granted. One key requirement to register a trademark with the USPTO is that you need to be using your mark in connection with selling products and services in what is called "interstate commerce." It's a pretty loose definition, but there does have to be some crossing of state lines.
For instance, that requirement is met if I have a client in Georgia who comes to my office in Tennessee. It's a pretty low bar, but you do have to have some sort of interstate element to get this nationwide protection.
Having a federal trademark registration gives you rights across the entire United States, even in states where you are not currently selling your product. It gives you the flexibility to expand into new areas at some point. So you don't have to be selling across the entire United States to get that nationwide protection.
Exclusivity
Let’s take our example a step further.
If a law firm in California starts up and wants to call themselves the AWB Firm, I can take action to stop them from using my trademarks when I have a federally registered trademark.
I can send them a cease and desist letter notifying them of my rights. I can file takedown notices on social media sites or other platforms where they may be marketing their law firm using my same name.
I can even file a lawsuit if I have to.
A federally registered trademark gives me this whole world of rights and the ability to enforce those rights nationwide, not limited to the territory where I'm actually selling. When I have a registered trademark, I am the only one allowed to use the trademark with my particular products or services - this is an exclusive right.
A federal trademark registration also gives you the ability to stop people from using either the same name, a similar name, the same logo, or similar logos. It doesn't have to be exact, it just has to be similar enough to cause confusion.
That's the number one benefit to why you’d register a trademark: you receive nationwide protection and exclusive rights to use your trademark.
2. Your trademark is searchable.
The second benefit to registering with the USPTO is that it provides public notice to other people that you have rights and are willing to enforce them.
If someone is considering starting a business or naming a new product or business, they might do a trademark search in the USPTO database. By the way, this is something which I highly recommend you do before launching a new business or product name. (I give details about trademark searches in Season 3, Episode 71.)
When someone does that search before choosing a new brand name or a new logo, your name will pop up because you are now in the database. They can see that you have taken the time, trouble, and investment to claim ownership of that trademark. It also shows that you are willing to enforce it.
There are a lot of trademark database websites that pull from the USPTO, so even if someone runs a Google search, it is likely that your trademark file will pop up in the Google search.
3. Your legal presumptions are established.
The third benefit to a registered trademark is that you get some legal presumptions.
In lawyer talk, all a presumption means is that instead of having to prove a fact by bringing evidence into court, the court will presume that the statements in your trademark registration are true. The court will presume that you do in fact own the trademark, and that the data first used and included in your trademark application is correct.
So let's say you sue someone who is using your trademark and you go to court. To win your case, you have to prove that you own the trademark, prove when you first started using it, and show that you were in fact the first person using it.
Presumptions are a shortcut. You don't have to prove those things; the court will presume them. That saves you time, energy, trouble, and money.
These are called "rebuttable presumptions," which means the other side can bring evidence to show that it's not correct. But again, it's just a little shortcut that makes filing your lawsuit a little bit easier.
4. You will have an international advantage.
If you are selling products or services in other countries outside the U.S., a U.S. trademark registration gives you the benefit of piggybacking on your U.S. registration to make registering your trademark in foreign countries easier.
This is complicated, and I would not recommend that you try to do this on your own. You definitely want to work with an experienced trademark attorney if you are considering doing this because there are very strict time requirements involved.
If selling internationally is your goal, that could be one reason why you’d register a trademark. It’s a definite advantage to use your U.S. trademark registration to jumpstart trademark registration in other countries.
5. You get protection from counterfeiting.
When you’re selling products and worried about counterfeiting, there's a huge advantage to registering your trademark with the USPTO. You can record your trademark registration with Customs and Border Protection, and they will take steps to stop counterfeit shipments at the border.
Here’s an example that is recognizable beyond the online space. Let's say you are Louis Vuitton and sell very popular handbags. The style of the purse is iconic with the LV letter logo and the recognizable colors. The bags are very easy to counterfeit because they have a standard look.
Once there is a trademark registration on that logo, and on the particular color or color combination, you can now record those trademark registrations with Customs and Border Protection. If there is a shipment coming in that they suspect has counterfeit goods, they can stop it at the border before those handbags hit the street vendors in New York.
There's an episode of the podcast How I Built This talking about the TRX trainer and the issue they had with counterfeiting. They were able to use their trademark rights to stop some of those counterfeits from coming into the US.
The online businesses we work with often sell merch like printed planners, mugs, and tote bags, or other branded products. It's a definite advantage to register the trademarks for the brand or name of your actual, physical products. It gives you a remedy and a way to stop infringements when someone is using something that you own without your permission.
6. Registration makes your business more valuable.
My favorite benefit from registering a federal trademark is that it makes your business more valuable.
I'm a big fan of business owners thinking about what it might look like to sell their business down the road – even if it’s a personal brand or you feel like you are the driving force behind your business. In the future you may want to bring on a partner or take on an investor. Trademarks become an important part of that valuation.
If a third party is coming into your business (whether you're leaving or whether you're just bringing on someone new), a portfolio of registered trademarks is a valuable asset and has monetary value.
You should also be registering your other intellectual properties that are key to your business, including patents. The same holds true if you have considered setting up a licensing or a certification program within your business.
Many of the AWB Firm’s clients are business owners in the online education and coaching space. For them, trademarks protect their certification programs or licensing programs.
When you certify other people to teach your special process or coach people a certain way, that’s an intellectual property that needs protection.
Collaborations
If you have a unique way of teaching a concept, or a framework that is very recognizable, you can give permission to others to use your trademark (licensing), and you’re better protected in these collaborations when you have a federally registered trademark.
Let’s look at Brene Brown for example. She offers The Daring Way® , a training and certification program based on her research. She teaches other professionals her process, and offers a license so they can use her “Daring Way” trademark in their marketing, while maintaining the quality and integrity of the product. By doing that, she can create an exponential impact, helping many more people without building her own huge team. Her certified students get the benefit of using her trademark to identify themselves as trained in her teachings, which increases the value of the certification to them. This also increases the value of the trademark, because it becomes more widely recognized when many certified professionals are using it.
You can charge a premium to license your trademark when it’s registered. And, you are in a better position to enforce your rights if someone you gave permission to use your trademark (licensee) goes rogue or stops paying their licensing fees. A registered trademark makes your business far more valuable, earning you more money down the road.
7. Registration makes it much easier to stop copycats.
The seventh benefit or reason you might want to register your trademark is that it’s much easier to stop infringers, or copycats. There is legal clout behind you and the law protects your intellectual property at a higher level.
All of the previous points mentioned lead up to why you register a trademark. So let’s recap:
- Federal trademark registration gives you nationwide, exclusive rights.
- Your trademarks are searchable.
- Legal presumptions are established.
- You have the ability to sue someone where you live, instead of having to go into the state where they are.
- It gives you an international advantage.
- You get protection from counterfeiting.
- It makes your business more valuable.
- You have the ability to get better damages if you do have to file a lawsuit against infringers.
All of these things really add up to leverage, giving you a metaphorical big hammer to threaten a copycat with if needed!
It all comes down to this…
The whole reason we have trademark law is to prevent customer confusion.
Businesses don’t want unscrupulous competitors confusing the customer and potentially stealing them. Just like Brene Brown doesn’t want someone teaching her framework, or holding themselves out as “Daring Way” certified without her permission, you don’t want someone taking advantage of your hard work for their benefit. Protecting customers from being confused by a copycat is really why most businesses will want to register a trademark.
From a business owner’s perspective, the real benefit is that it gives you the ability to stop someone else from using your trademark without your permission. You can take steps to either negotiate, or (if you have to) file a lawsuit in a U.S. federal court. Suing for infringement is expensive, time-consuming, and it's not fun for anyone involved, although it may be a remedy you need if the copycat is unwilling to stop without a court ordering them to do so.
We hope that these seven benefits answer why you’d register a trademark for your business. And here’s a bonus benefit for you…
Don’t miss your IP Audit Worksheet!
Did you know that you could be making more money from your copyrights and trademarks?
Intellectual property is probably the most valuable asset in your online business, but most entrepreneurs don't know how to identify it and you can't monetize what you can't find.
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This worksheet will help you create an inventory of your most valuable trademarks, copyrights, patents, or trade secrets, so you know what's worth protecting as you build a more profitable and sustainable business. This could be the most valuable five minutes you spend this week! Get your IP Audit Worksheet for free here.
