Trademark 101: Does my small business need a trademark?

A “brand” can make or break a business. A simple design, logo, or aesthetic allows consumers to immediately recognize a business, invoking action or triggering thoughts of brand reputation. Brands like Nike, Apple, and Disney, for example, carry with them years of investment.


On your small business or startup journey, you might not yet carry the weight of a behemoth company like Apple, but you are investing your time and money into building your empire, and brand reputation is an important part of that. To that end, securing a trademark offers gold standard protection on the time and money you’ve invested into brand development.


1. What is a trademark?


A trademark is a consumer preference locator. It is whatever identifies and distinguishes a good or services of one business from those of another.[1] Examples include a word, symbol, name, device, or a combination of those,[2] referred to as “marks”. Such mark guarantees consumers that they are purchasing the same product, of the same quality, that they have come to expect from a specific company.[3]


2. What protections can my business have with a registered trademark?


Two of the most important benefits of trademark registration, whether state or federal, is that it establishes ownership rights and the right to exclusive use of the mark in commerce.[4] Imagine that another company starts creating a good or service, in the same area as where you market your products[5], which is remarkably similar[6] to the goods and services that your small business provides. Given the confusing similarity between the products, the other business’s profit margins significantly increase because your customers mistakenly believe that they are buying your products.[7]


The example above is a classic trademark infringement situation where you would have a stronger case in court if your business has a trademark and it is registered. Besides creating a trademark, it is important to register it. An unregistered trademark is limited to being used in the territory where it has become established by actual use unless a law provides otherwise[8]. As a result, if a competitor lawfully creates the same trademark in a different location not occupied by another business, that competitor can use the same mark. That situation can be avoided by acquiring a federal or state trademark registration, discussed in more detail below.


3. What are the benefits of federal trademark registration?


A federal trademark registration recognizes substantive rights already acquired by the appropriation of the trademark and provides additional procedural protections mainly under the Lanham Trademark Act (“Lanham Act”). [9] Federal registration is the only type of registration that allows the use of the distinctive ® symbol along with the registered mark.[10]


Unlike a state trademark registration, discussed in the next section, a federal trademark registration assumes that your business is entitled to use the registered mark throughout the nation.[11] Otherwise, you would have to prove your business’s right to the exclusive use of the trademark.[12]


4. What are the benefits of state trademark registration?


At the state level, trademarks are protected by common law principles of unfair competition, and in some states, by statute.[13] Procedural advantages arising from state trademark registrations are more limited in scope than those from federal trademark registration, and generally, the protections apply only within that state.[14] Refer to your state-specific trademark registration protections for more information.


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About CORPlaw. Headquartered in Miami, FL, CORPlaw is a boutique business law firm that helps modern entrepreneurs grow and protect their business. Founded in 2017, this minority and female-owned law firm has advised countless small businesses owners, startups, and creatives through the state of Florida, the national, and abroad. The CORPlaw team continues to grow and build a reputation of professional excellence and client satisfaction. Contact CORPlaw today at 1 (833) 545-7526, info@corplaw.us, or on our website (www.corplaw.us).



This article is for general information only. The information presented should not be construed to be formal legal advice. By using this blog site, you understand that there is no attorney-client relationship between you and the blog site publisher. The blog site should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.

[1] Trademark: Overview, Practical Law Practice Note Overview 9-512-8249. [2] Acquiring Trademark Rights and Registrations, Practical Law Practice Note 2-505-1700. [3] § 1:2.Function of trademarks, 1 Trademark Registration Prac. § 1:2. [4] § 1:3.Benefits of trademark registration, 1 Trademark Registration Prac. § 1:3. [5] Szajna v. Gen. Motors Corp., 503 N.E.2d 760, 771 (Ill. 1986). [6] Trademark: Overview, Practical Law Practice Note Overview 9-512-8249. [7] See 15 U.S.C. § 1052(d). [8] See U.S. Printing & Lithograph Co. v. Griggs, Cooper & Co., 279 U.S. 156, 158–59 (1929); see also Id. at 11. [9] 74 Am. Jur. 2d Trademarks and Tradenames § 61. [10] § 1:3.Benefits of trademark registration, 1 Trademark Registration Prac. § 1:3. [11] Emergency One, Inc. v. Am. Fire Eagle Engine Co., Inc., 332 F.3d 264, ­­268-69 (4th Cir. 2003). [12] Emergency One, Inc, 332 F.3d at 268-69. [13] 74 Am. Jur. 2d Trademarks and Tradenames § 74. [14] Id.

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