If you’re starting a business, trademarks, service marks, and copyrights may not be top of mind. But maybe they should be.
While most of us have seen the encircled R and C and superscripted ™ more times than we can count, we don’t always see the connection to our own businesses. After all, many businesses don’t write books or become household names — both of which are common uses of trademarks and copyrights.
But that doesn’t mean your business has no property — intellectual or otherwise — to protect. As part of the RevUp professional development series, our own intellectual property lawyer Steve Zemanick recently shared his trademark expertise with our clients and team. Here, we’ll fill you on in what we learned, including:
- What copyrights and trademarks are
- The differences between the two
- The benefits of registering
- Why you should take steps to protect your creative property even if you don’t register
What Are Copyrights and Trademarks?
Both copyrights and trademarks exist without you doing anything. Copyrights exist from the moment you create a work, while trademarks exist by virtue of doing business. However, each applies in slightly different circumstances.
Trademark
A trademark is a mark that allows the customer to identify the source of a good; they can also be called service marks.
“Trademarks and service marks are only distinguished in the sense that if what you’re selling is a widget or a good, it means the identification of a source is the trademark. If you’re selling services, it’s a service mark,” says Zemanick.
You can trademark words, slogans, product or service names, letters, abbreviations, signage, sounds, smells, and even colors and color schemes. However, Zemanick says to register a trademark successfully, the good or service you trademark must meet these thresholds:
- Distinct from the goods/services they identify. Zemanick says, “You can’t block someone else from using the term copy, but you can prevent them from using Xerox.”
- Fanciful or made up. Terms don’t approximate commonly used words. Again, think Xerox or Kleenex.
- Arbitrary.There should be no relationship between the mark and the good or service, such as Apple for computers. According to Zemanick, this can be a clever long-term play even if it’s ambiguous at first. “The initial path was difficult because no one was familiar with what the product was, but when you grow an arbitrary brand it becomes super powerful,” he says.
- Suggestive. The thing you want to trademark can hint at the nature or purpose of the good or service while still being distinct. Zemanick says Airbus and Netflix are both well-known brands that have hit the sweet spot: “Those are the ideal brands because they inform the consumer, but it doesn’t at the same time.”
- Descriptive. You can also trademark something that describes the nature, purpose, characteristic, or ingredient of the good or service, like Honey Smoked Fish. However, Zemanick says these can be harder to get right out of the gate.
Copyright
A copyright specifies the ownership of something you create.
“Copyrights arise right from the get-go when you’re an author and you create the subject matter and fix it in a tangible medium,” Zemanick says.
While the creator typically owns the work, ownership often shifts to the employer or client if the work was created during employment or a project for hire. Copyrightable subject matter commonly includes:
- Literary works such as marketing or training materials
- Software
- Pictorial or graphic works such as photographs or artist renderings
- Motion pictures, such as videos
- Sound recordings
- Architectural works
- Musical and dramatic works
Why You Should Secure Your Creative Works
Copyrights and trademarks can exist even if you don’t register them with the U.S. Copyright Office or United States Patent and Trademark Office (USPTO). However, Zemanick recommends thinking about federal registration as an added layer of protection.
“You can register those rights to enhance them, make them more preservable, and go nationwide,” says Zemanick.
Registering a trademark is how you go from ™ to ®, but it also helps you:
- Preserve your ability to go nationwide. You can assert your rights against anyone anywhere in the U.S. if you’re ready to expand there.
- Establish a right of priority. All others coming after your application filing date will be secondary to your claim and will likely have to work around it.
- Make your trademark citable. The USPTO can use your application as the basis to refuse trademark applications filed after it.
Registering a copyright has similar benefits, including:
- Allows for copyright infringement suits. You won’t be able to sue someone for reproducing your works unless you register the copyright with the U.S. Copyright Office.
- Makes damages available: Registering a copyright within three months of publication ensures statutory damages are available in case of infringement.
- Defines monetary damages. Registering also outlines the compensation you’ll be entitled to if someone does infringe.
- Protects your rights long-term: Even if you abandon a copyrighted work, you can still defend it against competitors if you can prove you may go back to it.
Finding the Right Time To Register
Trademarks and copyrights are vital, but the reality is that it doesn’t always make sense to register. According to Zemanick, the interstate commerce threshold is the tipping point. The moment you plan to scale, you should copyright.
“If you think about all the businesses in Denver, a lot of them are small. Their footprint is basically Denver,” he says. “They aren’t going to have customers walking in from Kansas regularly.”
Because those smaller businesses may have strictly local clientele, there’s minimal risk that consumers will confuse a hypothetical Grandma’s Diner in Denver with one of the same name in Kansas — unless the one in Denver plans to expand to its eastern neighbor.
The second layer, Zemanick says, is thinking through whether you have something distinct and defensible to register for.
“It has to be unique across the country,” he says. “When you’re thinking about trying to clear a mark that is a fairly common term, it’s not going to be available to you on a nationwide basis. Mom-and-pop businesses that are regional never register but are everywhere.”
5 Things Small Business Owners Can Do Today to Preserve Their Intellectual Property for Little/No Cost
Registering for a trademark or copyright might not be a priority for your business this month or even this year. However, according to Zemanick, you can take action even if you’re not ready to register. Consider:
- Thinking through your expansion plans: Are you operating locally with no thought to expand, or is multi-state growth on the roadmap and you need to preserve the possibility? Filing a trademark or copyright isn’t always necessary, but it’s ultimately an inexpensive way to safeguard your expansion.
- Seeing what else is out there: What marks have already been applied for or registered that could stand in your way? This can guide branding decisions even if you aren’t ready to trademark just yet. Says Zemanick, “You want to know who else is out there because they can prevent you from using [their trademark].”
- Identifying whether someone is already using a mark you like: Google brand, product, or service names you’re considering to see whether they’re already in use. You want to know whether any third parties can assert prior use rights and force you to stop using the mark. This is essential, according to Zemanick, because a third party can assert prior use without having registered.
- Setting up a Google Alert: Create notifications for your company name to get insight into how you appear on the internet. “If it’s not you, you should be worried,” Zemanick says. “Someone could be trading with your name.”
- Start using ™: Putting ™ or another form of copyright notice next to your brand is a great place to start. It costs nothing, and it tells others you consider your name or other material intellectual property. This can also be helpful if you need to assert prior use rights down the road.
Develop a Brand You Love — and Take Steps to Protect It
While our team at RevUp Growth Partners aren’t attorneys and can’t offer legal advice, we can help you design creative and brand elements worth registering.
If you think registering may be in your future, reaching out to an intellectual property lawyer like Steve Zemanick early on is your best bet. He can consult on brands-in-the-making, recommend how to adjust your brand, products, or services if needed, and file your registration for you once you’re officially ready to register.