Startup founders: Follow these 4 steps to trademark your technology business - Technical.ly Philly

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Nov. 30, 2020 7:57 am

Startup founders: Follow these 4 steps to trademark your technology business

Intellectual property pro Josh Gerben on the benefits of a registered trademark, and how to do it.
U.S. flags.

U.S. flags.

(Photo by Flickr user Arden, under a Creative Commons license)

This is a guest post by Josh Gerben, the founder of Gerben Intellectual Property.

Philadelphia was founded with a strong entrepreneurial spirit that is still alive today. If you are currently developing your own Philly-based technology startup, don’t overlook the importance of trademark registration.

There are four main steps in the process to register a trademark, outlined below. But first: What are the benefits of a registered trademark?

A trademark is anything that shows a particular product or service is related to a specific brand. Technology companies should register trademarks for their business names, but other aspects of the business like logos, slogans and even signature colors should also be considered for trademark registration. Once you’ve registered your mark with the U.S. Patent and Trademark Office, or USPTO, you will have the presumption of validity nationwide. This means anyone, anywhere in the United States will not be able to use a confusingly similar mark. You will be able to take legal action against any potential infringement as well.

In addition to the important legal protections that come with a registered trademark, it can be a tool to build brand loyalty and customer recognition. The right trademark will help consumers find your business in the crowded tech space, and it provides an additional layer of professional validity. It’s also a requirement for investors and anyone looking to purchase the company down the road. In fact, a trademark is an asset that can grow in value as your tech company grows in value. And just like other business assets, it can be bought and sold.

Here’s how to register your trademark:

1. Conduct a comprehensive trademark search.

The USPTO will not grant registration to your trademark if a confusingly similar mark is already in use. To ensure that the mark you wish to register is available, you should first conduct a comprehensive trademark search. It can be frustrating to learn that your trademark is not available for registration, but it’s best to learn this before you submit your application and pay your filing fees.

Many websites advertise free, do-it-yourself trademark searches, and while tech savvy business owners may be tempted to take the DIY approach themselves, it’s not recommended. Often, these searches tend to only return exact matches for your business name, but most trademark disputes are caused by similar marks, not exact matches. In addition, conducting a search for a logo or color can be even more challenging on your own. Trademark attorneys have access to sophisticated software that can search for both exact and similar matches to all of your marks. If a confusingly similar mark is found, they will work with you to make the necessary changes before your application is submitted.

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2. File a trademark application with the USPTO, and consider international registration.

The USPTO does not accept paper trademark applications. All applicants must use the Trademark Electronic Application System, or TEAS. There are several types of TEAS applications, based on the type of communication method you prefer and the International Classes you plan to include in your application. The USPTO offers 45 International Classes to choose from, that represent the goods or services you plan to offer under your trademark.

The TEAS Plus application is the least expensive, but it requires applicants to choose from a much smaller list of pre-selected classes. TEAS Plus also requires payment at the time of filing and communication through email only. If your classes aren’t offered through TEAS Plus, you may want to consider TEAS RF, or Reduced Fee. While you can select any of the 45 classes to include in your application and payment is not required when you file, you will still only be able to communicate with the USPTO through email. The most basic, and most expensive, application is TEAS Regular, which allows you to choose any of the 45 classes and you aren’t limited to email for communication with the USPTO.

Most technology businesses, by nature of the global economy, will likely reach customers outside the United States as well. For that reason, it’s wise to consider international registration. There are two options for registration outside the United States. The first is to file a trademark application directly with each individual country. Another option utilizes the Madrid Protocol, which is an international treaty allowing registrants to file a single application that can then be applied to over 90 member countries. Each country, then, makes its own determination of approval.

3. Respond to Office Actions issued by the USPTO.

Once your application has been submitted to the USPTO, an examiner will be assigned to it. If, throughout the process, the examiner has a question or concern, you could be issued an Office Action. While Office Actions are commonly issued throughout the registration process, the reasons vary.  Some simply request additional information or clarification on some aspect of your application. Others may notify you that your application has been denied. Whatever the reasons, however, it’s important to respond to the USPTO within six months of the issue date. If you fail to respond by the deadline, your application will be considered “abandoned” and your filing fees will be lost.

4. Monitor your mark’s use for potential infringement.

Maintaining control of your tech company’s brand is essential for its future success, as you gain recognition in the industry and build a reputation with customers. If another brand uses your mark, either knowingly or unknowingly, it could create confusion in the marketplace and drive customers away from your business. For this reason, it’s important to monitor your mark’s use in public and take swift action against potential infringement.

The great news is that if you continue to monitor your mark, use it consistently, and meet renewal deadlines, your trademark registration will never expire. Just be sure to start the renewal process well in advance of the deadlines given by the USPTO. For new trademark owners, the first renewal will take place between the fifth and sixth year, and then again between the ninth and 10th year. After that, prepare to submit renewal documents to the USPTO every 10 years.

Bonus: Work with an attorney to trademark your tech business.

While you are busy fine-tuning your app or meeting with software developers, you may think you don’t have time to register your trademark. Putting off the task, however, could have serious implications to your brand’s success. Instead of forgoing registration, consider engaging an experienced Philadelphia trademark attorney (such as, full disclosure, Gerben Intellectual Property, of which I’m the founder). Your attorney will conduct a comprehensive trademark search, draft your application, and respond to non-substantive Office Actions on your behalf. Once your registration has been approved, your attorney can also take on the task of monitoring your trademark’s use for potential infringement, and take the appropriate legal action when needed.

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