Philly-based businesses of all sizes will benefit from trademark registration. Whether you plan to open a coffee shop in Chestnut Hill or dental practice in West Chester, the time to begin the trademark registration process is now. Here’s a breakdown of the steps to protect your trademark:
- Select a trademark and conduct a trademark search.
- Work with an experienced trademark attorney to manage the application process.
- Monitor your registered trademark, and take action against infringement.
Why Your Business Should have a Trademark in 2021
Business owners know that the key to longevity and success is not simply developing one product or offering a single service, but rather, building a brand. A strong brand will help to establish consumer recognition, which then leads to customer loyalty. Your brand, however, can only be strong when it is protected through trademark registration. As the owner of a registered trademark, you will have legal standing to take action against anyone using a confusingly similar mark in the marketplace. You’ll also have the presumption of nationwide validity, which will allow you to expand your business to reach customers outside the greater Philly area.
Steps for Registering a Trademark in the Greater Philadelphia Area
Here is an overview of the steps to registering a federal trademark:
Come Up with a Unique Mark and Perform a Search
In order to build a successful brand, you need to use a strong trademark, one that is easily recognizable and distinguishes your business from competitors. As you select the perfect mark, it’s often best to compile a list of several possibilities. This gives you some options if you learn a particular mark is already in use by another business. Avoid generic and descriptive marks, like Tasty Pizza or Sweet Donuts, which will be rejected by the USPTO and will not be memorable. Instead, consider arbitrary marks, which are words or phrases that do not represent the goods or services you plan to offer (like the Philadelphia based store Anthropologie), or fanciful marks, which are often completely made up words. Nike, for example, is an extremely successful fanciful mark.
After you’ve decided on a handful of potential trademarks, the next step is to see if they are available for registration. This is done through conducting a comprehensive trademark search. Work with an attorney to conduct a search for the first choice from your list. If no confusingly similar marks can be found, then you can move ahead with submitting an application to the USPTO. If conflicting marks are found, however, you can make changes to the mark or select another option. Once you’ve found a mark that will not cause a likelihood of confusion in the marketplace, you can then register the mark with the USPTO.
Work with an Attorney and File an Application
The process to register a trademark takes, on average, around 8 to 10 months to complete. It also involves many complex legal actions, from conducting your comprehensive trademark search to selecting the correct International Classes and responding to Office Actions issued by the USPTO. An experienced trademark attorney will take on many of these tasks for you, so you can remain focused on growing your business, not registering your mark.
Working with a trademark attorney ensures that the process will run smoothly from start to finish, and increases the likelihood of approval from the USPTO. In fact, a study by the University of North Carolina found that trademark applications submitted with the help of a trademark attorney were up to 50 percent more likely to be approved. This cuts down on the time and money associated with refiling your application, and it provides valuable trademark protections in a timely manner.
Monitor Your Mark
As a trademark owner, you will be responsible for monitoring the use of your mark in the marketplace. If another business or individual is infringing on your mark, it could damage your brand’s reputation, confuse customers, and even steer them away from your business. One simple way to reduce the risk of infringement is to begin using the ® symbol once the mark has been approved by the USPTO. This lets others know that your mark has been registered. Use it wherever your trademark is seen, like product labeling, signage, and your website.
If you find potential infringement, however, it’s important to take swift action. Work with your attorney to determine the best course of action, which could include a simple cease-and-desist letter or more formal legal action. If you maintain control of your mark, use it consistently, and meet renewal deadlines, your trademark registration, and the valuable protections associated with it, will never expire!
When Should You Trademark Your Business Name?
Begin the process to register your business name with the USPTO as soon as you’ve chosen the name. Ideally, trademark registration should be one of the first things you do when planning to open your business in the greater Philadelphia area. Before you invest in signs for your business, marketing materials, or even a domain name, you should be sure that your business name is available for trademark registration, and lock in your priority date, which prohibits others from registering a similar mark after you. Moving forward without trademark ownership could leave you and your brand vulnerable to infringement in the future.
Trademark Registration for Your Philly-based Business
A strong trademark will help you build a successful brand and stand out in the crowded Philadelphia market. Once you’ve narrowed your trademark down to several options, work with an attorney to conduct a trademark search to determine the availability of the marks. Your attorney will then draft a trademark application, submit it to the USPTO, and even respond to non-substantive Office Actions on your behalf. After your trademark has been approved by the USPTO, begin using the ® symbol, and monitor your mark’s use. If you or your attorney find evidence of infringement in the future, take quick action to stop it, so that you maintain control of your brand as you continue to grow your successful business.
Josh Gerben is the founder of Gerben Intellectual Property, a full-service intellectual property firm, with physical locations in Washington, DC and Philadelphia. Josh and his team offer copyright, patent and trademark services. Since 2008, Gerben IP has secured over 5,000 trademarks for clients and has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more.
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