6 Things Every Entrepreneur Should Know About Trademarks.

   Before we can discuss what you should know about Trademarks, let’s first define them. Trademarks are any names, marks or any device used to identify a brand. Trademarks are not just limited to names and logos, they can also include slogans, colors, smells, sounds, product packaging or any identifying feature of a brand that would help a consumer identify it in commerce. A trademark is an asset to your business as it is a type of intellectual property that holds monetary value.


If you come up with a name that is already in use by another brand that’s in your same relevant market, you will not be able to register the mark as your own. The sad part is that the name doesn’t even have to be the exact same. Any “likelihood of confusion” with another trademark in the same market can mean years in litigation. This is a legal analysis, not what you think causes a “likelihood of confusion.” Only rely on an attorney for this analysis.


You can have the same name as another business without causing a “likelihood of confusion” if the names represent brands in two different consumer markets. There are 45 relevant markets within the United States Patent and Trademark Office (USPTO) under which a trademark can be registered. The markets are identified by “international class” numbers, so it is important to identify under which markets your trademarks could fall. This is heavy stuff, so you would need to enlist some legal help to conduct a legal analysis.


You can only register one Trademark at a time in a single application. For example, if you have a name, a logo and a combination of name and logo together, then those are actually 3 separate Trademarks. So, you will need 3 separate applications to fully protect your brand.


Before you start, know that you can protect your trademark before you start using it. There is a separate application for trademarks that are not used in commerce. Check with your lawyer to see if this is an option you should exercise.


If a designer is creating logos and materials pertaining to your trademark, make sure they warrant the originality of them in writing. If they use already used content as a base, you may have issues when you try to protect it with a Trademark registration. If they are “similarly confusing” to another Trademark in commerce in your market, then you will not be able to register it and/or worse, find yourself defending a possible infringement.


Get in the habit of having a contract with everyone you do business with, particularly designers. Better yet, get an attorney to draft contracts for you. An attorney will take the time to understand your goals in order to properly protect your rights. Also, stay away from contract templates online. A contract is only as good as its content, and if a contract doesn’t have the right language, you can lose the protection you were seeking in the first place.

I know this is a lot to digest, so I created some easy to read e-books to explain some of the concepts highlighted in this article. Also, check out this downloadable guide . It’s free and gives you a broad overview of the trademark process.

Salma is The Millennial Business Lawyer™ and lead legal strategist at The Benkabbou Law Firm, PLLC. She is licensed to practice law in North Carolina, New Jersey (since 2013) and in Florida (since 2014). She helps entrepreneurs with business formation, contracts, Trademarks, Copyrights, Trade Secrets and all ancillary legal matters that pertain to starting, running and scaling a business. Trademarks and Copyrights are federal matters so they do not vary from state to state so she helps clients with them nationwide.

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