Picture the scene… you’ve strived for years to build up your business, mixing brilliant ideas with hard work to create a brand you're proud of. Then one day, you get a court order telling you to rip it all up. It turns out someone else has a similar name or logo, and you’re infringing on trademark laws.
For many brands, this hypothetical scenario becomes all too real, turning the dream of building a brand into the nightmare of it all crashing down. Every brand name consultant has heard too many of these stories to doubt the importance of trademarking your brand name.
In the US, it costs just $350 to apply for a trademark, plus a few extra fees, while in the UK the fee starts at £170. Both of these pale in significance to the monumental cost of a trademark lawsuit, which ranges from $120,000 to $750,000 in the US and between £100,000 and £500,000 in the UK.
Do you need to trademark your business name?
There are several key benefits when it comes to trademarking your brand name.
-Legal protection and exclusivity
Registering your brand name gives you exclusive rights to use the trademark to sell goods or services. Once you’ve trademarked your name, you can protect your brand from potential infringement, bringing legal action against those who trade off your reputation. A federally registered trademark protects your brand name on a national level.
-Brand differentiation and recognition
A trademark helps consumers identify and remember your brand, setting you apart from competitors in a crowded market and catching the attention of a wider audience. This, in turn, leads to increased visibility and a larger market share. Trademarks also play an important role in creating and shaping brand identity. Beyond brand name recognition, trademarks help you align your logo, style, design, values and more to cement the essence of your brand and create a legally recognizable definition of your brand’s personality.
-Building brand equity and value
Trademarks provide incredible ROI. They are inexpensive to obtain, yet the value of a trademark appreciates over time by solidifying your presence within your industry, generating new revenue streams and protecting you from legal difficulties that could prove costly. It also works to build a loyal audience and convey a sense of trust and authenticity to consumers. This trustworthiness also works to attract investors and secure vital funding to help the business thrive.
-Preventing counterfeiting and consumer confusion
Trademark infringement can lead to extremely damaging financial costs. These include legal fees, financial penalties, settlement costs and the cost of undertaking a complete rebranding. Beyond the initial outlay, infringements also come with potentially fatal damage to a brand’s reputation. Registering your brand name also helps to protect consumers, enabling them to buy your products or services with confidence while eliminating the threat of counterfeit products.
-Marketing and licensing opportunities
With increased brand awareness, recognition and recall, a trademark can work to boost your marketing campaigns, reaching wider audiences and increasing sales and profits. A distinctive trademark acts as the foundation of your marketing efforts, helping you connect with consumers on an emotional level and encouraging them to choose your brand over others. Moreover, trademarking a brand name can create passive income streams for your company. Your IP can be monetized through royalties and licensing fees – essentially lending your brand’s good name to generate additional revenue.
What exactly is a trademark?
A trademark is a form of intellectual property (IP) that’s connected to specific goods or services supplied to consumers. It serves to distinguish your business from others. A trademark isn’t limited to just one product or service but can apply to a variety provided under one brand.
Aside from brand names, many elements of a brand can be a trademark. Everybody recognizes world-famous trademarked logos such as Nike’s ‘swoosh’, McDonald’s golden arches, and slogans like Apple’s “Think Different.”
Trademarks can also be a set of words in a certain order. Just take boxing ring announcer Michael Buffer, who trademarked his legendary catchphrase “Let's Get Ready to Rumble!” in 1995. The UK chocolatier Cadbury even trademarked a color, winning a High Court order in 2022 that allowed the brand to trademark for the specific purple pantone it uses on its chocolate bar wrappers.
Brands can even trademark a scent. For example, Play-Doh’s distinctive scent is owned by its manufacturer Hasbro, while footwear company Grendene owns the trademark to the bubble gum fragrance that characterizes its shoes and sandals.
There are three main categories of trademarks: individual marks, certification marks and collective marks. An individual mark is the most common and is used to differentiate a brand’s goods and services from those of other brands. Certification marks are used to guarantee that goods or services that use the mark meet certain standards or requirements established by the owner. On the other hand, collective marks are used by associations, rather than the brands themselves, to distinguish multiple types of goods and services from a range of brands.
Not everything can be trademarked. A descriptive or generic word or phrase cannot be trademarked. Adjectives like “chocolatey”, “creamy” or “crunchy”, for example. There are also lots of misconceptions about trademarks. One is that you don’t need to register a trademark if you’re using it, as the use of a name, logo, or slogan is proof enough. This is not true – the importance of a trademark cannot be overstated.
Another misconception is that small brands don’t need a trademark and should wait for their business to grow before registering one. Many fledgling businesses make this mistake.
What’s the process for registering a brand name trademark?
Before you begin applying for a trademark for your brand, you first need to conduct a comprehensive trademark search that avoids any potential future conflicts. Many online search databases display applied-for and registered trademarks covering various countries around the world.
You’ll also need to ascertain which trademark class your brand’s goods or services fall into. Trademark classes help to categorize your brand’s offering, sorting it into one of 45 groups. This enables you to create a trademark within a specific area. The United States Patent and Trademark Office (USPTO) provides a trademark search system that can help you view the various trademark classes.
The USPTO Trademark Center is the place to file your trademark application in the US. It’s a centralized platform where you apply, pay application fees and track the status of your trademark application. The trademark application process should take around a year to 18 months depending on a number of factors, including the complexity of the trademark, any legal challenges and system backlogs. One option to make the process easier is to hire an attorney to help you through each step.
What happens when it goes wrong?
As Warren Buffett famously said, “It’s good to learn from your mistakes; it’s better to learn from the mistakes of others.”
Many businesses have suffered from a blasé approach to trademark laws. In South Korea, a fried chicken restaurant thought it would be a good idea to choose Louis Vuiton Dak as its name. Inevitably, the international fashion designer Louis Vuitton came knocking and won its trademark battle. After changing their name to ‘Louisvui Tondak’, they were then hit with a $10,000 fine for non-compliance.
Then there’s the famous dispute between two globally renowned organizations, World Wrestling Federation and the World Wildlife Fund. The latter took action against the wrestling company when it took the name WWF in 1979, almost two decades after the conservation group was founded. The legal battle lasted until 2002 when the wrestling organization finally lost, changing its name to WWE (World Wrestling Entertainment).
More recently, following the release of the first Hobbit film in 2013, a lawsuit was filed against a popular pub in Southampton, England, named The Hobbit. Taking inspiration from J. R. R. Tolkien's original book, it had been trading with the name since opening its doors in 1989. That cut no ice with Hollywood film hotshots the Saul Zaentz Company (SZC), who accused the pub of copyright infringement. But not all superheroes wear capes – stars of the film Stephen Fry and Sir Ian McKellen swooped in at the last minute, agreeing to pay the copyright licence fee so that the Southampton pub could carry on trading as The Hobbit.
Trademark your brand name
Philanthropy may have saved a small pub in England, but many brands have sunk without a trace due to the damage caused by trademark infringement lawsuits. It needn’t be an issue. Registering a trademark is simple and inexpensive – if you’re operating in the US, just visit the USPTO Trademark Center; if you’re in the UK, head to www.gov.uk/how-to-register-a-trade-mark.
At Semiya, we’re brand name consultants who can help you create company and product names while carrying out in-depth trademark research. Our brand name service not only helps you capture the essence of your brand, but also ensures you’re legally protected while differentiating you from the competition.