“Though this be madness, yet there is method in’t.”
― William Shakespeare, Hamlet
Trademark law is enough to drive anyone mad! The whole point of using trademarks is to protect your brand, your business. But there is no requirement that trademarks be registered at all. Moreover, you have to prove you’ve used the mark in commerce before you register a trademark with the State or the U.S. Patent and Trademark Office (the “USPTO”), meaning that you have to risk using the mark beforehand.
So when should you – and when shouldn’t you – register your trademarks?
First, understand what a trademark is. Trademarks are the words, names, symbols, or other branding devices (like sounds or colors) that you use to distinguish your business from your competitors.
Distinctiveness is the key: to stand out, you can’t look like everybody else in the marketplace selling the same or similar stuff. For a mark to be registrable, it has to be unique. The strongest trademarks are creative. Devices that are fanciful, arbitrary, or suggestive are distinctive enough to function as trademarks. Examples are made-up words (“Xerox” for copiers), unrelated words (“Apple” for computers), and marks that indirectly allude to a quality of the goods or services (“Playboy” for a men’s magazine). Devices that are descriptive of your goods or services can become trademarks through lots of advertising and goodwill (think “Sharp” for televisions). Devices that are generic for the goods and services (like “Plumbers” for plumbing services) cannot ever be trademarks because other businesses need to use the same words to describe their goods and services.
The first person to use a distinctive mark in their geographical area gets the right to exclude all of their competitors from using the same or similar marks for as long as they continuously use the mark. While that right exists without the need to first register your trademarks, registration puts your competitors on notice as to your claim to the marks.
Registration means that your competitors can’t copy your mark and later claims that they didn’t know that you used it first. Therefore, before you adopt a trademark, you have a duty to make sure no one else is using something like it. We always encourage our clients to obtain a Comprehensive Search Report from a reputable provider before they adopt a mark.
If you find out that the mark you want to use is taken by someone else for the same or similar goods or services, you can’t use it and you certainly shouldn’t try to register the mark. If you discover that no one is using the mark you want, you should consider registration.
If you only intend to use the mark within the State of Florida (e.g. no interstate commerce is involved) then you can register the mark just with the Florida Division of Corporations. That still puts other son notice of your rights in the mark, but tells them that you claim Florida as your territory – they may be free to use it elsewhere.
If your mark will be used across the United States, consider federal registration with the USPTO. Federal registration is the gold standard, and it must pass examination by a USPTO Examining Attorney to be registered. Registration gives you a presumption of ownership in the event of litigation, but you still will have to prove when, where and how you used the mark the first time.
Carlos Carbonell, CEO, Echo Interaction Group
Rob Henlon, Fierce Entertainment
Michelle Widmer, Founder & Director of Events, The Empress Table
Rodney E. Luke, President, Luke Brothers Custom Homes