Laundromat, thermos, and aspirin all have something in common. They lost their trademarks and went from being single products to representing entire product categories. We talked to Eric Hanscom, a patent attorney and the founder of Intercontinental IP, about trademarks and what you need to know to stop something like that from happening to you.
Do I Need a Trademark for My Business?
The first thing you should decide is if you even need a trademark. When you start a service business and don’t have anything to patent, you need a trademark. McDonald’s has made billions of dollars, not by patenting the hamburger but by doing a great job on branding.
“You don’t necessarily need a patent to succeed. But if you don’t have a patent, you need great branding, and branding goes along with the trademark.” – Eric Hanscom
You also want to trademark your brand name to avoid cases of mistaken identity.
On the other hand, if you are an inventor who wants to get a provisional file of your idea and license it to a larger company, you don’t have to worry about getting the trademark. The company will decide on the color of the packaging, the name, and everything else that has to do with branding.
What Types Of Trademarks Exist?
There are federal, state, and foreign trademarks. In the days before the internet, state trademarks were fine. Today, the federal ones have more value. Sometimes, if you have a name that is not likely to get a federal one, you can file a couple of state ones as a backup because they have lower standards. The best option is to have both. In terms of cost, state trademarks have a cheaper filing fee. General advice is to do a federal and then aim for the state you are in, or maybe a neighboring state and a couple of key ones like New York, California, Texas, Illinois, and Pennsylvania.
What Makes For A Good Trademark?
A good name makes all the difference. The name can be fanciful, like M&M chocolates and Polaroid. Those are names that haven’t existed before, and someone made them up. Arbitrary names are names known in the English language but not commonly applied to that product. The best example is Apple. Suggestive names, like Greyhound for bus lines, suggest the quality of the goods or services, and descriptive names describe what you do, like Carlsbad Toy Company. The worst option is to go with generic names, like calling a shop that sells surfboards a surfboard shop. While fanciful and arbitrary names have a good chance of getting the trademark and suggestive ones take a little money to fight the US Patent and Trademark Office, the descriptive and generic names don’t stand a chance.
When Do I Start?
Your naming process should start at least six months before you start doing anything else. You can do your trademark search through the USPTO Trademark database, USPTA, TLS, Google patents, or you can hire a professional to do it. Some entrepreneurs file two or three different names at the beginning, which enables them to choose the right strategy when launching.
“Don’t start a business and then five years into it start looking at patents and trademarks. It will be too late.” – Eric Hanscom
Once I File, Is There a Lot of Back and Forth?
It depends on whether you’ve done the trademark search first. If you decide to save money on the search, you can get a rejection over the identical name. When you search correctly, your attorney knows what to worry about and can offer you advice. Adding a logo or a tagline can help you differentiate yourself from others. When doing your first trademark, go with the name, the logo, and the tagline, then deal with the details later.
What If I Am International?
US patent and trademark protects you only in the US. To protect yourself in Canada, for example, you need to file there, too. You can file individually in the countries you want or go through Madrid protocol and piggyback on several foreign countries on the back of a US application. With this protocol, you are paying more, so it makes sense if filing for more than three countries. You can add countries later for less money. Your trademark attorney can handle a lot of situations without paying for foreign counsel.
“You need to have adequate funds, be tenacious, have a good product, and be lucky. If you are determined and never take no as an answer, you can find your good luck even when it doesn’t find you.” – Eric Hanscom
The “Idea Pros” at IdeaPros have the resources, experience, and tools to help you at this step or any step in the entrepreneurial journey. We partner with entrepreneurs at any stage and who are ready to invest their ideas. Apply for an interview and let’s explore partnering together.