Keep what’s yours.

The most recognizable aspect of a company is its trademark. Trademarks identify a business to the world. Because of this, companies spend a tremendous amount of time and money ensuring that their trademark is easily identifiable and respected by the consumer. In reality, a trademark, in the mind of the consumer, is the company. Protecting your right to exclusive use of your trademark should be one of your company’s highest priorities, and the best way to protect it is to register your trademark with the United States Patent and Trademark Office (USPTO).

The biggest reason to have exclusive rights to your trademark is to prevent other companies from claiming they have rights to use it. Issues regarding trademark exclusivity usually pop up when you come across a company using your trademark, or a company trying to stop you from using your trademark. Founder of Planet Earth¿ and Rhythm Skateboards® Chris Miller discovered the importance of federal registration and exclusive use when he had to fight more than once for his trademarks. Fortunately for Miller, he has won every trademark-infringement case to date for both Planet Earth and Rhythm. But after battling one well-known and deep-pocketed corporation, he has some sage advice: “It’s better to spend a little money up front to register and avoid all the hassles you can, because you probably can’t afford it if someone challenges your right to your trademark.” Miller recommends registering your trademarks before you begin using them.

The second reason to have your trademark registered is to protect your right to market your company’s products all over the United States. Some people think that if they have a product, they’re free to sell it anywhere they choose. If you’re selling a product under a trademark that is not registered, this may not be true for you. When you sell products under an unregistered trademark, you receive what is called a “common-law” right to use your trademark. Under a common-law right, you only have an exclusive right to use your trademark in the areas you already sell to. This may pose a problem if your company wishes to expand in the future and sell in other growing markets. Tum Yeto ringleader Tod Swank set a strong “foundation” for his success when he registered his trademarks. Swank’s decision to register came from his realization that he was “in it for the long haul,” and registering gives him the security to project his company into the future.

Another potential problem with common-law rights to a trademark is that there is always the possibility that someone else out there has come up with and is using an idea that is the same or similar to your trademark. Theoretically, several companies in the U.S. could be selling the same products under a same or similar trademark and claiming a common-law right to that trademark. This creates what is referred to as the Swiss-cheese effect, which means each company has pockets of the U.S. market in which they can and cannot sell. This can be devastating to an expanding business, not to mention the severe damage that can be done to your reputation if consumers confuse your company with other companies that are selling lower-quality merchandise or marketing their products in areas that affect your company image.

Because it deserves to be mentioned twice, I will state it again: the best way to protect your company from either one of these fates is to register your trademark with the United States Patent and Trademark Office. By conducting a thorough search of trademarks being used in the U.S. and by registering with the USPTO, you can be confident of having exclusive rights to your trademark.

Another benefit to having registered your trademark is that an infringing company may be forced to pay all of the legal fees you accrue trying to stop them fromsing your trademark. And if you find yourself in trademark-infringement litigation facing a company with the same or similar trademark, the law presumes the party who has the trademark registered has a superior right to it.

Now for those of you who think you have registered your trademark because you have filed a DBA (“doing business as”), then you need to keep reading. A DBA does not offer the same protection under the law as a trademark registered with the USPTO. Many times I have heard, “Yeah, I registered my trademark with the county when I got my DBA.” Unfortunately, filing a DBA that is the same as your trademark has very little to do with the registration of a trademark. The same can be said about filing the appropriate papers with the state to become an Inc. (Articles of Incorporation), an LLC (Articles of Organization), an LLP (Certificate of Limited Partnership), or any other letter configuration that each state allows you to call yourself.

Only when you send the right form to the United States Patent and Trademark Office have you applied for federal registration. Here is where the do-it-yourselfer must be warned that there are a number of hidden potholes in the registration process that can cause big headaches: To properly register your trademark, either do some research (i.e., read more than just this article), or, as both Miller and Swank recommend, consider hiring an attorney who has trademark-registration experience.

If you opt to test the waters yourself and are planning to start a company, or you have a trademark that is not federally registered, the first step is to learn about the trademark-registration process. The USPTO has some useful basic information, and they can be reached at: 1-800-PTO-9199 (1-800-786-9199); or on the Internet (http://www.uspto.gov); or by writing to the Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513. The American Trademark Company (http://www.trademark.com) is a commercial site that also has some good background information. If either of them do not satisfy your quest for knowledge, there are plenty more public and commercial sites on the Internet and other resources in your local public library that may aid in your understanding of trademarks.

The second step is to have a search done to determine who besides you may be using your trademark. A reliable search is of the utmost importance, because your registered trademark is only as secure as your search. And if your application is rejected–or later challenged–because a similar trademark already exists, you’ve wasted valuable time and money.

There are numerous companies that advertise on the Internet offering trademark searches. But beware–not all searches are equally thorough. The basic requirements for a search are an examination of the federal register, all 50 states’ trademark registers, and non-registered uses found in trade directories, trade-name directories, specialized dictionaries, buyers’ guides, and the like. If you do hire a company to perform a search for you, make sure that they cover at least the above areas for your trademark.

You would be surprised how many other people have similar ideas, so sometimes it’s a race to register. It is also surprising what the law may consider to be “similar.” The problem with figuring out what is “similar” is that the process is totally subjective. The only way to know with any certainty is to see what courts have ruled to be “similar” in the past. If a search finds that no one is using your trademark, or anything similar, then you can proceed in registering your trademark. If someone has registered your mark, or has a substantial common-law right to it, then you may want to consider changing your trademark. If things have gone too far to easily change your trademark, you may want to proceed with caution, because continuing to use your trademark could cause you more problems than it’s worth.

The odds of experiencing conflict over trademark rights are directly proportional to the type of trademark you have. One reason Miller has had as many legal battles as he has is that he’s adopted common words and phrases for his trademarks. The words “planet,” “earth,” and “rhythm” are all commonly used English words. In comparison, Swank has not had many conflicts, mainly due to that fact that his trademarks are more unique (“Tum Yeto,” for example). This is not to say that you don’t have to protect your marks if you have an unusual trademark, but as a rule of thumb, the more common the word or words you use, the more chances there are of someone else using it, too.

As great as federal trademark registration is, there’s one thing it does not do, it does not protect your trademark internationally. Each country has different laws regulating trademark registration. International law regarding trademarks can be tricky. Plan ahead and get good advice from someone experienced in international law and/or sales.

Those who have been using ® after your trademark and are not registered with the USPTO must be warned that as a governmental slap on the hand, the USPTO may prohibit you from registering. The use of ® (Registered Trademark), ¿ (Common-law Trademark), or SM (Common-law Service Mark) has specific legal definitions, and the marks should not be used indiscriminately.

If you’ve read this far and you are registered, great–as long as you’re doing business, keep your registration current. Look out for other companies that may be using your same or similar trademark and riding your coattails. If your trademark is not registered, registering with the USPTO is a smart business decision that can protect your company’s interests.

This article is a simple introduction to trademarking–it is not a comprehensive guide on trademarks. If you wish to learn more, refer to some of the resources I’ve cited in this article, or contact an attorney specializing in trademark law. continuing to use your trademark could cause you more problems than it’s worth.

The odds of experiencing conflict over trademark rights are directly proportional to the type of trademark you have. One reason Miller has had as many legal battles as he has is that he’s adopted common words and phrases for his trademarks. The words “planet,” “earth,” and “rhythm” are all commonly used English words. In comparison, Swank has not had many conflicts, mainly due to that fact that his trademarks are more unique (“Tum Yeto,” for example). This is not to say that you don’t have to protect your marks if you have an unusual trademark, but as a rule of thumb, the more common the word or words you use, the more chances there are of someone else using it, too.

As great as federal trademark registration is, there’s one thing it does not do, it does not protect your trademark internationally. Each country has different laws regulating trademark registration. International law regarding trademarks can be tricky. Plan ahead and get good advice from someone experienced in international law and/or sales.

Those who have been using ® after your trademark and are not registered with the USPTO must be warned that as a governmental slap on the hand, the USPTO may prohibit you from registering. The use of ® (Registered Trademark), ¿ (Common-law Trademark), or SM (Common-law Service Mark) has specific legal definitions, and the marks should not be used indiscriminately.

If you’ve read this far and you are registered, great–as long as you’re doing business, keep your registration current. Look out for other companies that may be using your same or similar trademark and riding your coattails. If your trademark is not registered, registering with the USPTO is a smart business decision that can protect your company’s interests.

This article is a simple introduction to trademarking–it is not a comprehensive guide on trademarks. If you wish to learn more, refer to some of the resources I’ve cited in this article, or contact an attorney specializing in trademark law.