Forums: Discussions for entrepreneurs and small business.

One question that comes up from time to time in my business is "when should I register my trademark?"  I am curious as to when people in this group think it makes sense to register a trademark.  My quick and dirty answer to this is to register [1] when you think the mark probably is contributing to your making money and/or [2] when you would be angry if you found somebody copying the mark to sell their goods/services.  Given that successful marks are almost always worth more than the cost to register them, why would somebody wait AT ALL to register a successful mark?

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

I guess the key driver for many people is the `successful mark` idea as well as limited resources. I know you believe that money is always available and should always go to the attorney first; in a perfect world, maybe so.

I would suggest that when my client and I think that the brand will have a significant future contribution to the business, then we move for trademark protection. Once it`s actually contributing to income, as you suggest above, that is a lot of exposure to have out there without trademark protection. It`s just not that expensive to file and at least be underway when the brand takes off.

When I have successfully created a brand name/tagline or corporate name for a client, and have begun to move through url registrations and their site is in development, that is generally when I move for trademark registration.  It can be sooner than that given the vertical (and often is if we`re talking about pharma, biotech, or high-tech products), but I generally advise it when we are a few months out from collateral actually hitting the marketplace. 

If what we`ve branded is so brilliant that we are all sitting around and saying, `I cannot believe someone hadn`t already thought of that", I move to file the TM right then, and that happens sometimes. I`m talking about the brand itself being brilliant, as in the `brilliant!` British expression, not myself.  Then we all go out for a Guiness.

If the branding we are creating is in an extremely competitive and fast-moving category, trademark work can take place even sooner. The better the brand, the more it will get discussed, and I don`t want the name quoted in a trade journal or anyplace else unless and until we have locked down a few legal issues, trademark protection included.

If we`re in a M & A situation where companies are merging or becoming new identities, I would insist that the trademark be locked down way prior to any press releases or announcements to anyone but senior management.  If we are doing our work right, people will love to talk about what we have created. It`s the talk that gets us in trouble, and I`d rather be protected and have spent some money than not be protected and spent none.

I`d also would rather be protected and have spent some money than not be protected and spent none.  While this is "optional" in the sense that it does not legally have to be done, it seems foolish not to.  I don`t see how people can do otherwise and still sleep at night.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

I agree. Limited resources is an issue for everyone, ExxonMobil down to Sue`s Cookie`s. Differences in scale, to be sure, but if the call is for collateral or trademark protection, a small business is going to go for collateral. Not that I agree, but I can only advise them..

I guess the greater question is determining if the brand will take off and then be really successful. While everyone thinks it will, and believes they are the `best in class` or whatever, they often don`t put their money where their mouth is with regards to protecting their marks. I always find that odd. "We`re going to own this market", yet `we don`t want to spend the money to protect our name`. Huh?
These clients are idiots, and I always try and weed them out before I sign a contract to do work for them. My `no idiot` rule has slowed my growth (not by much), but lets me sleep at night.

It is definitely a risky proposition to simply hope that someone doesn`t come along and register a mark when you should have done so already. It`s an antsy place to be, and I don`t recommend it, either.

It`s like having this beautiful, intelligent, nurturing, giving girlfriend, yet ignoring her and not stepping up and paying her attention. How long until someone comes along who realizes her worth and actually pays her attention? That, my friends, is an unprotected position, and not a good one to be in!

great points. 

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

Those are all great points you guys are making. 

My question is - how much does a trademark cost?  I don`t dispute the value of the trademark, but should I worry about it before I`ve even sold one unit of product?

By the way James - I`m in your neck of the woods.  Well, sort-of.  I`m in Lorain.

Federal filing fee is $325. Costs to prepare the filing run from zero (doing it yourself), $159 (using LegalZoom.com), $??? using an attorney.

I would say the decision on how to proceed depends on your experience doing this sort of thing, the complexity of the trademark, and potential exposure.

I just spoke to a trademark attorney in Fort Lauderdale and he said it would cost between $1500-$2000, not including a search.  Ouch, that hurts being a small start up.  I think Legal Zoom is the way to go. 

Money decisions are almost always a matter of priorities.  I don`t personally know anybody on this list.  Yet I say, "You have the money to hire a lawyer."  You may think your trademark is not that important to the success of your business - and may be right, though I doubt that. 

If your car suddenly burst into flames or one of your teeth suddenly shattered in your mouth, you would get the $2,000 if you had to - some way some how - because you think it is important enough to be able to drive and eat.  You have the money or access to it.  We all do.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

I tried to trademark my brand and boy did I loose money! I fall under #2 ( and would be very angry to see someone copying it) but I might be even more hot if the person who has a variation of the name I wanted never does anything with it.  At least now I know noone else can legally use it.