Should we trademark our company brand?

September 5, 2007 12:05 PM

Should we trademark our company brand?

Me and two partners started a small tea company. It's beginning to take off. Should we trademark our logo? It can be a costly process according to our legal counsel, and is not always necessary, especially at the early stages of a company's growth.

I'm wondering if some enterprising competitor could come along and trademark our brand instead, and then force us to stop using it. Given there's a ton of legal documentation re incorporation, tax and so forth that exists to prove who the real owners of the brand are, is that really plausible?

I know you're not my lawyer, but I still value your opinion. Is trademarking worth our valuable capital right now?

posted by BorgLove to Law & Government (12 answers total)

How much is "a lot"? I know you'll have to do some research and stuff, but I didn't think it was super expensive to register a trademark. In a word, yes, register that thing.
posted by Mister_A at 12:16 PM on September 5, 2007

From the U.S. Patent and Trademark Office:

You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

constructive notice to the public of the registrant's claim of ownership of the mark;
a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
the ability to bring an action concerning the mark in federal court;
the use of the U.S registration as a basis to obtain registration in foreign countries; and
the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

However, a trademark application does not appear to be too difficult or costly.
posted by ND¢ at 12:18 PM on September 5, 2007

No. You're trademarked in the US automatically. If you use the name, it's your and someone else can't just steal it. You can pay money and get things more official, but I doubt that small business tea companies are all that cutthroat. Spend your money getting the name out there, it will do more good than getting it legally recognized.
posted by andrewzipp at 12:20 PM on September 5, 2007

Short answer: Yes, it is plausible that you could be shut out of registering your own TM.

If someone did come along and TM your mark, they still wouldn't be able to stop you from using it in your current territory -- you have a common-law TM, but that applies only within states where you're currently doing business. They might be able to keep you from using the mark in other states, even if you've got other proof that you were the first user of the name.
Beyond the malicious coopting of the mark, someone could very easily, in total good faith, start up another company with the same or a similar enough name, register that mark, and then you'd have trouble registering your mark. Unless your mark is unregistrable for some reason (ie, it's a generic or merely descriptive name -- say, "Spicy Teas" for a company selling spicy tea) you're probably best off registering as soon as you have the capital available to do so, especially if you're already worrying about people stealing your mark out from under you.
posted by katemonster at 12:23 PM on September 5, 2007

Response by poster: Apologies, I should have mentioned: we're in Canada, not the US.
posted by BorgLove at 12:25 PM on September 5, 2007

Well, then, this link suggests that an unregistered Canadian mark has common-law rights nationwide, but registration is prima facie evidence that you own the mark. That is, if you don't register and someone else does, the burden of proof is on you to show that it's your mark. I'd still suggest registering, but I think you're safer in Canada than you would be in the US, especially if you've got other documentation that the mark is yours.

Contrary to what andrewzipp says, you are not automatically trademarked nationwide in the US, and people can (and do) steal names, purposely or inadvertently, a lot.
posted by katemonster at 12:30 PM on September 5, 2007

Sorry for the assumption. Please disregard the information that I provided.
posted by ND¢ at 12:31 PM on September 5, 2007

It might be worth getting a US trademark, if you think you might want to expand your business south of the border someday.
posted by Steven C. Den Beste at 12:56 PM on September 5, 2007

You can't register a mark on a vague expectation of "someday" using it. You must be using it in commerce or have concrete plans to use it in commerce in the jurisdiction where you are registering.
posted by mbrubeck at 1:20 PM on September 5, 2007

ditto on getting a trademark in countries you might expand into - just ask (the london) suede, (band of) bees or the (detroit) spinners
posted by noloveforned at 1:22 PM on September 5, 2007

Ok, I know we've determined that this isn't in the US, so it is somewhat of a moot point, but (invoking this recent MeTa) I would like to mention for posterity that I think andrewzipp's comment is highly misleading and/or dangerous. There are huge benefits to registering your trademark in the US, and many of those benefits depend on when you register, and generally the earlier the better for you. People should not wait around to register thinking they are "automatically" protected.

IANAL(yet), IANYL, this is not legal advice, etc.
posted by falconred at 6:15 PM on September 5, 2007

In the meantime, (check this, IANAL) you can use the TM superscript as a meager protection. (Different than RM-- registered trademark) Here's some info, (disclaimer: unvetted site, US info, but still).
posted by nax at 5:03 PM on September 6, 2007