As a Small Business Owner You’re Thinking: Why Bother with Filing a Trademark?

registered trademark for small business

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Trademarks can prevent lawsuits

In any event, if you can metaphorically wave that trademark registration -- that mere piece of paper -- at that Infringer, you can tell them, in that same letter, that you have trademark rights that are superior to their rights. And that, if the infringer doesn’t stop using your mark, you can sue them.

And, if you sue them, you are more likely to win than if you did not have a registration, and then you could (under certain circumstances) be awarded statutory damages (up to three times the infringer’s profits from improperly using your trademark) and the attorneys’ fees and costs you might spend in any lawsuit to enforce your trademark rights.

And, being able to THREATEN someone with a lawsuit that could succeed, can SAVE YOU THE MONEY of having to bring a lawsuit.

However, be sure that your trademark “use” pre-dates the alleged infringer’s use before sending the letter, because, if their use pre-dates YOUR use, you can be sure that they’ll tell you to stop and don’t do that again…

Four key trademark points:

1.  Your lawyer should do a comprehensive trademark search, and analysis of the search results, before you roll out your product or file for registration; that way, you know beforehand whether you are stepping on the toes of a prior user BEFORE you go to market.

2.  If you are not “using” the trademark to promote your goods and services in interstate commerce, you can still file a trademark application on an “intent-to-use” basis.  The application takes several months to get approved; you get six months from approval to start using the mark in commerce, or to request up to six 6-month extensions to use it; and when you finally file proof that you are using it, your registration is effective retroactively to the date you filed. 

3.  If you have a trademark registered in another country that has a trademark treaty with the U.S. – which includes most of Latin America – you don’t need to file proof that you are using the mark in the U.S. until five years after registration. 

4.  Finally, it may look easy to file for trademark registration online, but it can be very costly if the filing is done incorrectly. You will then have to hire a lawyer to fix everything, so my advice is not to do the filing yourself, but to get an experienced trademark attorney to work with you to make sure that your mark qualifies for trademark protection and that the filing is done correctly.  

Related articles:

Small Business Start Ups- Making It Legal 

WHAT'S IN A [TRADEMARK] NAME?  

Legalities of Mergers and Acquisitions

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About the author

Mark Kaufman

Mark Kaufman, Esq. is a graduate of Amherst College and Columbia Law School. He has practiced law for over 25 years.  He is the name partner of Kaufman & Kahn LLP, based in New York City. Mr. Kaufman has a broad-based business law and commercial litigation practice with a special focus on trademark and copyright law. He has been responsible for prosecuting, enforcing, and defending hundreds of trademarks and copyrights over the course of his legal career. He also has expertise in negotiating a range of agreements relating to the use, protection and licensing of intellectual property.  He represents a range of clients, including artists, e-commerce companies, retailers, and publishers. Mr. Kaufman resides in Westchester County, New York.

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