Today is World Intellectual Property Day, and this year, we take the time to celebrate small businesses who are the lifeblood of our global economy. In the United States, small businesses drive our economy – they comprise more than 90% of our businesses and employ nearly half of the country’s workforce. This past year as we faced one of the most challenging global public health crises we will likely see in our lifetimes, many of these businesses suffered during lockdowns. If there is one thing I know for sure, it is the resiliency of the small business owner. I will never bet against them. Ironically, last year in the U.S. more new businesses were started in 2020. Why? It’s hard to know for certain, but I can tell you anecdotally I received calls from more than a handful of new business owners who felt they had more time to devote to making their dreams of owning a business more of a reality this past year while they were working from home. This year also marks the 75th anniversary of the Lanham Act, the U.S. statute that protects trademarks. Last year, we also saw new trademark applications filings at the USPTO surge to record high levels, another strong indication that businesses of all sizes are not pulling back on investing in their trademarks, but are pivoting to compete in a digital, online world. Technology is a great equalizer for business. We live in a time where having a website can expand a company’s reach and social media be a relatively inexpensive marketing tool. Owning a trademark levels the playing field among businesses, but it’s important to know some basic tips if you want to compete and manage your budget wisely. Here are three tips for any small business that wants to differentiate itself in the market and create a distinctive brand in the U.S.:
1. Choose a distinctive name
Remember that your brand name is of paramount importance, and it should reflect your values and mission. It should also be ownable and distinctive. If you don’t have the budget to hire a branding or marketing agency to help you create a name that really reflects your product or service, remember that your brand is the personality of your business. You’ll want it to communicate your positioning, your brand promise, and your mission or values to your target market in a distinctive way, while keeping in mind the goal of owning your brand name, legally. Make sure you work with a qualified trademark attorney to properly search your list of marks until you find one that works not only for the business but also from a legal perspective. Remember, this is a process and it takes time, so plan ahead!
2. Apply for your trademark as soon as possible
Once you have settled on a brand name, do not delay in applying for your federal trademark application. In the U.S., use is not required to start the application process. Although filing on an intent to use basis may add costs and time to the process, it secures your priority date, which is legally significant. As soon as your business plans are solidified and your name is chosen, you want to work with your trademark counsel to file your application to secure your rights. The government process is a long one, and by waiting, you could add significant costs to the process. Although a prior user will always have prior rights over someone who files without use in the U.S., the costs to prove that are at least ten times what it costs to file a trademark application, so don’t delay, as doing so can significantly impact a small company’s budget quickly.
3. Make sure the company owns all its IP
When a small company, especially, seeks assistance from vendors and freelancers to create its logo or develop social media content or its website content, make sure all non-employees are assigning all the original creative work back to the company. In the U.S., all copyright rights vest in the creator of all original creative works, not the person who pays for that work. Your IP attorney can advise you as to what safeguards are required in your contracts to ensure all the IP being created for you belongs to you!
Of course, every business’ situation is different and unique, and it’s impossible to provide a full overview of every aspect of the Lanham Act and the U.S. Copyright Act in a blog. If you require specific advice or wish to learn more about how we can become a valued member of your team, please feel free to contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.