Trademark word cloud


David H. Schwartz July 31, 2019

If you run a business in the San Francisco Bay Area, you know firsthand how brutally competitive the world of commerce can be. As such, you’re protective of your company’s intellectual property — that is, your internal ideas, inventions, products, services, processes, slogans, logos, and other works that are unique to your business.

With each exciting new piece of intellectual property, it may be tempting to pursue a registered trademark. However, doing so is not always the right move from a legal or logistical standpoint. Explore the three considerations outlined below to determine whether it’s worth it for you to get a registered trademark.

Consideration #1: Is Your Idea Is As Original As You Think It Is?

A common (and often expensive) mistake that business owners make is failing to verify that their intellectual property is in fact original and available for trademark registration. According to the United States Patent and Trademark Office (USPTO), 2016 yielded a total of 5,881 Trademark Opposition filings. Although that number decreased by 16% between 2017 and 2018, it’s still a considerable risk for business owners to ignore. After all, penalties for trademark infringement can range anywhere from an injunction (a demand to cease all use of that trademark) to civil or even criminal penalties. Best to avoid those risks altogether.

So how you do you check that you’re not infringing on someone else’s trademark? Simple. Go to the USPTO website and explore their Trademark Electronic Search System (TESS). As the USPTO website will tell you, your trademark is not available for use if you find another that meets all three of these criteria:

  1. The trademark is similar to yours,

  2. The trademark is used for services or on products related to yours, and

  3. The trademark is “live” (meaning actively in use).

Before you get too deep into the trademark registration process, take the time to complete this crucial step. Otherwise, you could wind up unintentionally infringing on someone else’s intellectual property and paying the price — literally — for that mistake.

Consideration #2: Do the Benefits Outweigh the Costs?

Although getting a registered trademark can be an exciting prospect, it isn’t worth it for everyone. For example, consider these two businesses in very different positions:

  • Business A is a brand new company that’s barely able to cover its overhead costs. They’re proud of the slogan they’ve come up with, but in truth it’s not all that distinctive.

  • Business B is a bit more established, offers an extremely niche set of services that aren’t widely offered in San Francisco, and has just managed to develop a slogan that encapsulates the originality of that service.

Obviously, this example is a gimme — Business B is in a much more strategic position to be pursuing a registered trademark. Business A, on the other hand, should put its resources to better use for the time being and revisit the trademark idea later on.

Consideration #3: Do You Have the Resources to Protect Your Trademark?

Unfortunately, registering a trademark isn’t enough to keep your intellectual property safe forever. Once your intellectual property is registered (be it a logo, symbol, slogan, phrase, or other representation of your business), you must be proactive and vigilant of those who might infringe upon it.

For instance, if your trademarked logo is regularly used by others, or if another company has been using a logo substantially similar to your own, your once-protected logo could become “public domain” as far as California law is concerned, rendering it unprotected as your intellectual property. If you can’t afford the time to keep a watchful eye or the resources to keep infringers in check, then getting a registered trademark now could translate to money down the drain.

Experienced Business & Trademark Litigation Attorney in San Francisco

The Law Offices of David H. Schwartz is a trusted resource to business owners throughout the Bay Area. With more than 45 years of experience representing San Francisco area businesses, principal attorney David H. Schwartz can advise you on:

  • How to defend your trademark if you suspect infringement

  • How to effectively protect your intellectual property in general

  • Whether to file a commercial lawsuit

  • What steps to take if you’re already involved in a commercial lawsuit

Thanks to Mr. Schwartz’s extensive experience in and out of the courtroom, he can offer both seasoned legal guidance and aggressive representation. To learn more, contact the Law Offices of David H. Schwartz today.