Whether you’re a start-up or an established business, branding your products or services sets you apart from competitors.  Businesses spend time and money on branding to ensure they’re well-known, but they often overlook the importance of protecting their brand marks until it is too late.

At what point does a business need to protect their brand by registering with United States Patent and Trademark Office (“USPTO”)? If a business provides only services, does it need a special protection?  What happens when someone has similar branding in the marketplace? Read below for answers to these questions and more.

“Trademarks” vs “Service Mark”

The terms “trademark” and “service mark” are often used interchangeably but they are different.

A “trademark” protects branding words, names, symbols, sounds, or colors that distinguish goods from those manufactured or sold by others.  Trademarks also indicate the source of the goods.  “Nike” and “Apple” are among the most recognizable trademarked brand names. The “Nike” brand distinguishes its sports apparel from those of other sellers, such as “Adidas”, a competitor brand.

A “service mark” is similar to a trademark, however, instead of branding goods and products, a service mark is used to distinguish a specific service of the business.  Examples of service marks are “The Hartford”, for insurance underwriting services, “Qantas”, for passenger and freight airline services, and “Vanguard” for financial planning services.

In short, a trademark identifies products or goods created by a business, and a service mark identifies a service.  A single mark can operate as both a trademark and a service mark. For example, “McDonald’s” represents hamburgers and a drive-in restaurant service.

Why Register Your Trademark or Service Mark with the USPTO?

Registering your trademark or service mark allows for use of the ® symbol, which adds legitimacy to a company or business.  Use of the ® symbol, in turn, deters a competitor who may be considering using either the exact mark or a confusingly similar mark.  If you plan to expand business outside of your state, registering your mark is recommended up to three years beforehand.   

A business is not required to register marks with the USPTO, but it’s a good idea due to certain protective advantages, including that registration:

• Provides constructive notice to the rest of the country that you are the owner of the mark, even if you do not yet do business nationally.  You could lose the right to expand outside your original business area if you do not register.
• Allows exclusive rights to use the mark in connection with the goods or services listed on the application. This protects you if others infringe on your brand.
• Protects against infringement where another person claims ownership or tries to use the same mark.

If you do not register your mark and there is a registered owner of the same or a similar mark, that owner will have an indefinite period of time to sue you for infringement.

Creating a Registrable Mark

The registration/approval process is less costly than you might imagine but takes more just submitting an application. The USPTO will review and search for conflicting marks, i.e. marks that are similar and that could cause a “likelihood of confusion” for the public. If a likelihood of confusion exists, there is a chance the USPTO will refuse registration.

Considering the following before branding and filing a trademark/service mark application:

1. Whether the mark you want to register is protectable.
2. How difficult it will be to protect your mark based on the strength of the mark selected.

(For more information about selecting a protectable trademark, the USPTO has provided the public with an informative video).

Registered trademarks enjoy exclusive use of their marks as a result of trademark protection. Savvy business owners register their marks even before becoming world renown. Registering with the USTPO provides exclusive rights to the use of their marks now and in the future.  The USTPO recommends all businesses obtain legal advice on registering your trademark. The experienced professionals at Capobianco Law Offices can help.