How to Protect Your Business and Intellectual Property

Small Biz Alert: Guarding Your Intellectual Property: Trademarks & Service Marks 101

Symbols for trademark and service mark (Image: File)

To file an application, you have to decide on Federal vs State. You go the federal route if it’s Interstate Commerce. Pretty much anything you do in the Tri-state area is interstate commerce because there’s enough business that moves between New York, Connecticut,  and New Jersey that you can argue that your business or services is interstate. If you are selling something by the street corner you can just get a state registration, though state does not give you the same protections as federal but it does give you the ability to say it’s a registered trademark.

The federal registration process is stronger. Technically because you have nationwide rights. Just like patents, trademarks are not country specific. But at the same time, if you have a business in Hawaii but selling in New York and then in California the following year, a federal registration gives you national protection and freedom to trade in these other parts of the country.

The letter “R” in a circle means it’s gone through the federal registration process, you’ve applied to the patent and trademark office, they’ve examined the trademark, and it’s been approved.

“TM” basically means I’m claiming trademark rights here or SM, I’m claiming service mark rights here. It doesn’t get you much as far as going to court, but it does put someone else on pause, maybe they’ll think about it first before deciding to use.

There are two ways to file that are important to businesses. What they call the “attempt to use application” or “used base application.”

Used based application just shows you have been selling a product for years and have decided to apply for trademark. You have to show the requisite documents of proof of sale.

Intent to use is very important for businesses. You may not be ready to start using your mark, but you also don’t want somebody else to come along and try to take unfair advantage. It helps for you put your stake in the ground saying “As of this date I have intention to use this mark for my products and service.” Then get a notice of allowance. After that, as long as you continue to maintain the work and pay the fees every six months, you get up to three years from that notice of allowance until you finally start using your mark.

Also, patents are good for 20 years. After you file a trademark, they are technically indefinite as long as you go through all the steps. Each registration is good for 10 years and then you can renew that registration as long as you continue to use the mark again.

With a patent, you are giving the invention to the public in exchange for 20 years of exclusive use. A trademark is evidence of your reputation and this word or this symbol or this design is evidence of your reputation so you should be able to keep that forever as long as you continue to use it. If you keep using it for five years, it becomes incontestible, more rights also give you the opportunity to file abroad— maybe China or Brazil world cup is coming up you want to go sell your product or services there. It gives you a stepping stone to do that.