As the marketplace continues to grow and new online businesses emerge daily, business owners must be diligent about protecting their brands through trademarking. Trademarks identify the source of a product, such as a company logo or name, and help to protect your brand from being infringed upon. Registering your trademark early in the life of your brand is helpful if litigation is needed since you can rely on your registered rights. Luxury brands and goods are especially at risk for attempts at trademark infringement, as copycats want to take advantage of the success of your brand for their own gain.
With Success Comes Challenges
When your brand is established as a luxury brand, you may be at higher risk of being a victim of trademark infringement. Counterfeit luxury goods, such as knock-off designer handbags and jewelry, are a big problem for businesses. According to the Organization for Economic Operation and Development, counterfeit products may cost the economy up to $250 billion each year globally.
Luxury goods are likely to be counterfeited since they are more valuable, which can benefit both the seller and buyer of counterfeit items — sellers can sell more of the product, and buyers can purchase “designer” items at lower prices. In some cases, however, the buyer is unaware that the item they are purchasing is counterfeit, as they could be paying full price for a knock-off item.
How Does a Trademark Protect My Business?
Federally registering your trademark protects your brand across the United States. State-level trademark registration is an option, but when dealing with luxury goods, you will likely want a federal trademark to ensure protection across the U.S. Once your business holds a trademark registration certificate, you will have validity over those with non-registered trademarks who infringe on your trademark. This means you can enforce your rights if others attempt to infringe on your trademark.
The Process of Trademarking
The first recommended step when considering trademarking your business is to seek an experienced trademark law attorney to support you through the process. Trademark law is complex, and you want to be sure the process is done correctly the first time to avoid spending an unnecessary amount of time and money. Typically, in the United States, the process can take eight to 10 months, so you will want to avoid delays as much as possible. An attorney can help you understand the different types of trademarks that may apply to your business and help you through the process of registering a trademark with the United States Patent and Trademark Office (USPTO):
- Preparation. Learn about trademark law and begin to understand which trademarks apply to your business. Create a name and logo that are distinctive and unique to ensure an easier time registering your trademark. You’ll have a more difficult time obtaining a trademark if your name, logo, or goods/service description are too generic.During preparation, you will also want to search the public database of trademarks online to ensure none are too similar to yours. If a currently registered trademark and yours are likely to cause confusion due to being too similar, your application may be rejected.
- Application submission. The USPTO uses an online filing system, so trademark applications must be filed electronically. Your application indicates which type of trademark you want to register for and identify and classify your goods or services. The application cost varies for each filer depending on the number of classes of goods or services included in your application.
- Working with the USPTO examining attorney. An examining attorney is assigned to review your case to determine whether it meets the rules and that the appropriate fees have been paid. The review includes a search of existing trademarks to determine if there are any conflicts or similarities between your application and any already registered trademarks.Once the review is complete, the USPTO will issue a letter informing you of any reasons for refusal if they determine your trademark should not be registered. There could be major reasons for the determination or just minor corrections to be made. If you are sent a letter, you must submit a response within six months if you do not want to abandon your application.
- Determination. The USPTO will send you a notice of publication of your trademark if there are no objections by the examining attorney. If your application is denied, you will learn about it in the previous step, at which time you have options to make changes to the objections. If you fail to overcome all the objections, a final refusal letter will be sent to you.
- Trial period. If there are no objections by the examining attorney, your trademark will be published in the USPTO’s weekly publication, the “Official Gazette.” At that time, there is a 30-day period where another party can file an opposition if they believe your trademark could be damaging to them. If there are no objections, your six-month trial period begins when you are expected to use your trademark in commerce.
- Filing and review of statement of use. Once you have used your trademark during the trial period, you will file a statement with the USPTO so they can determine if your trademark is being used properly. If it is determined that all standards have been met, your trademark will finally be registered. Failing to file the statement of use on time, or using an extension request, can cause your application to be abandoned.
- Maintenance. You must file specific maintenance documents about two months after your statement of use is approved. Failing to file these documents can lead to a cancellation or expiration of your trademark registration. Continue to monitor your registration status annually in the online system and stay current with required filings.
Four Reasons Legal Can Help You Protect Your Brand
If you are offering a luxury good or service, working with a lawyer experienced in trademark law is crucial to protecting your brand. Trademark registration is complex, so attempting to complete the process alone can be risky. At Four Reasons Legal, we have been helping companies with their trademark and copyright needs for over 15 years. Contact us today to schedule a consultation with an attorney and discuss your company’s trademarking needs.