How To Sort Through The Trademark Process
Making your mark without an ironclad trademark can be troublesome. It’s better to safeguard your brand name to help fight against copies, lawsuits or worse. Especially in the age of Amazon, trademark power covering words, phrases, slogans, symbols and designs is being wielded to repel sneaky competitors and counterfeiters seizing upon successful businesses. Beautyblender, Lush and Estée Lauder are just a few of the cosmetics companies that have relied on trademark protection to fend off infringement. Securing trademark protection, though, isn’t as simple as signing up for a credit card. Beauty Independent turned to trademark attorneys Diana Palchik and Josh Gerben to guide us through the trademark process.
- Trademarking timeframe
- Don’t wait to trademark. As soon as possible brand names are tossed around, Palchik suggests trademark searches should be conducted to determine if the names are claimed. She points out it’s fine to apply for a trademark before a name is used. Palchik details, “For example, if I want to launch a new hand cream I’m making in my kitchen, and I anticipate launching it in 12 to 18 months, I can look for a brand name now and apply for it.” To her dismay, many brands go in the opposite direction. “The biggest mistake that entrepreneurs make is that they fall in love with a name, start moving forward with their business, get far along and then they think about the trademark, but they haven’t done the proper clearance,” says Palchik. The length of the trademark registration process varies depending on the workload of the U.S. Patent and Trademark Office (USPTO). At the moment, Palchik says trademark processors are working pretty quickly and registration is often completed in three months, but the timeline can stretch to 10 months or longer. There’s an upside to the wait. Even before it’s processed, an application can signal to brands considering similar names that they should change course.
- Naming your product right for protection
- Apple is frequently cited as a supremely sturdy trademark and not the Red Delicious sort. The word apple works well with computers because it generally has nothing to do with them. For beauty brands, Gerben advises, “The less the name has to do with the cosmetics industry, the stronger it will be. Trademarks that are unique to an industry are very strong.” He comes across scores of brand names that are merely descriptors of the products – i.e., smoothing serum, detangling conditioner or Bob’s body lotion – and are difficult to trademark. Palchik counsels entrepreneurs to select several names in the brand planning stages and search for existing trademarks for those names. “If you are down to one or two names and are not coming up with any hits, then, at that point, get a lawyer to look at it for 30 minutes to an hour just to have another set of eyes. It ultimately saves money,” she says. “It’s pretty hard to change things once you’ve filed.”
- Money for your mark
- The USPTO charges a fee for filing a trademark application, and it ranges from $225 to $400 per class of goods or services. Entrepreneurs can conduct free searches of words and design marks on the USPTO’s online database. Although entrepreneurs can do a lot themselves, trademark professionals offer reassurance. “I’ve seen a lot of assumptions in DIY searches,” says Palchik. “It’s always good to have an attorney at least look at it.” Lawyers are skilled at searching the variations of a name that might cause issues. Of course, they’re not free. Rates begin at about $99 and rise to thousands of dollars, usually for a slew of extra services. Gerben charges $950 for state, federal and common law searches harnessing specialized trademark software, drafting and filing the trademark application, and responding to minor USPTO actions. “Every attorney will tell you the more lucrative clients come to you when they’ve done something wrong,” says Gerben. “It’s better to do something proactively. If you have a strong name, are cleared from a search standpoint and file an application, there’s not a lot that can go wrong for your brand as you build equity.”
- Core versus comprehensive trademarking
- Why have less protection when you can get more? Cost is a factor. It might be best for a brand to file trademark applications for every product name, but brands have to operate within their means. Palchik recommends analyzing which products are crucial to the bottom line and file applications for those cash cows. Like applying for trademarks on multiple products, trademark searches outside the U.S. increase expenses. There is no standard international trademark, and individual countries have their own systems for trademark processing. Palchik estimates search costs can double or triple by throwing Canada and the United Kingdom into the trademark search mix. “If you search every country in the world, you are looking at thousands of dollars, if not tens of thousands of dollars,” she approximates. However, such searches can be important if those countries are key expansion targets or if a brand wants to identify the foreign trademarks of international competitors that could enter the U.S. “It’s good to know the landscape,” says Palchik. “The more we can learn, the better prepared we are.”
- Potential problems
- In order to secure a trademark, an applicant must show there’s no likelihood of confusion with previous trademarks. Palchik explains confusion stems from identical trademarks as well as fairly similar names or designs. “Ideally, you don’t get into that situation by doing due diligence on the front end and understanding what’s a strong or weak mark,” she says. Brand founders that decide to forgo federal trademark registration still have trademark rights because rights result from usage of marks. Unregistered or common law trademarks provide protection, but it’s limited geographically. “If they are just on the West Coast, then somebody uses the same name on the East Coast, they wouldn’t be able to shut down the person on the East Coast as long as that person is staying on the East Coast,” says Palchik. “If they had a federal trademark registration, they would have rights throughout the U.S.” No matter the level of protection, trademarks can’t prevent rivals from replicating brand or product names. “We don’t have trademark police in our country,” says Palchik. “It’s up to the brand owner to enforce their trademark.”
- Amazon and the importance of trademarks today
- Gerben receives at least a call a day from an Amazon seller battling an infringer. “It’s the Wild West when it comes to intellectual property rights and infringement on that platform,” he says. Despite rampant infringement, Gerben emphasizes, “It’s very difficult to deal with Amazon if you don’t have a federally registered trademark. Amazon becomes a lot less responsive. If I was going to be a seller on there, it would be an absolute must-have to have trademark registration.” Amazon is now encouraging trademarks by requiring them for its brand registry, a program giving sellers tools to control their Amazon product pages. Trademarks are also essential to defend brands against counterfeiters from China and elsewhere. Palchik says federal trademark holders can alert U.S. Customs and Border Protection when they spot Chinese knockoffs entering the market, and customs officials will assist in shutting down the importation of those knockoffs.