Trademarks can be filed at both the state and federal level. The application for registration of a trademark on the federal level is done pursuant to the Lanham Act, which grants the registrant the right throughout the entire United States and its territories whereas filing an application for registration of a trademark at the state level only gives the owner of the registered trademark rights within the territory of the state. Typically, we recommend filing your trademark application at the federal level with the United States Patent and Trademark Offices (“USPTO”). Though filing a federal trademark application takes longer and costs a bit more, it offers more protection than a state specific registered trademark. Additionally, because the Lanham Act grants rights nationally and to outlaying territories to registered trademarks, the registration of a trademark at the federal level will almost always trump a trademark registered at the state level.
Why do I need a trademark?
Registration of your trademark protects your brand and growth. Trademark registration also provides value to your company or corporation as an intangible asset in the form of intellectual property. Anytime you are building a brand with a new or existing company or corporation, you want to think not only how to protect yourself today, but how to protect yourself during growth, and provide value to investors and yourself upon sale. Trademark registration helps accomplish these goals.
Trademark Tips and Pitfalls
1. Registering your Fort Bend, Georgetown, Harris, or Lubbock County business with the Secretary of State without checking the trademark registry is never a wise idea. Often businesses are dead set on their business having a specific name with the Secretary of State. This can hinder growth because a different business has already registered a trademark with the USPTO with the same or confusingly similar name, affecting your ability to register your mark.
2. You know what they say about when you assume things? That saying holds true to trademark law too. Never assume your trademark is so unique that there is no need to register it. Successful companies have made that same mistake only to find themselves being forced to rebrand several years later.
3. Filing a trademark application without making sure you can expand your brand. Many times, businesses in Fort Bend, Georgetown, Harris, or Lubbock County will think they have the perfect mark, only to find out that the domain name is already taken, or someone has the name already on a social media platform.
4. A brand is meant to be distinctive, and your trademark should be too. Many trademarks merely name the service or goods they provide, or are generic names, and consequently are not entitled to trademark registration under the Lanham Act. While the supplemental trademark registry may be an option depending on the circumstances surrounding your trademark, why would you choose a fallback option when you can get it right from the beginning.
5. Registering your Fort Bend, Georgetown, Harris, or Lubbock County business with the Secretary of State and mistakenly believing this means you have obtained a trademark. It simply is not enough to form your company or corporation. You must seek trademark protection, preferably under the Lanham Act by registering your trademark with the USPTO.
6. Trademark searches are not limited to the USPTO website. Businesses that assume (there’s that word again!) that because they did not find their trademark on a simple trademark registry search so it must be available make a detrimental mistake that can be costly. A more advanced search within the international class your goods or services fall under, a trademark search in coordinated classes, and an internet search for unregistered marks that predate use of your mark or are more well-known than your mark, among other things, is always necessary.
7. It is not enough to merely register your trademark. You have to be diligent in protecting and using your mark. Registering a mark that you then fail to use continuously, or altering your mark outside of the trademark registration, can both jeopardize trademark protection and your brand. Likewise, failing to protect your mark against brand infringement can cause your business serious harm.