What You Need to Know About Ecommerce Trademarks
By Mark Hayes
Do you need a trademark for your ecommerce business? Protecting your online reputation is an important part of building your business and earning your customers’ trust. In the U.S. it’s easy to start using a trademark (for products) or servicemark (for services). In fact, you can do it in just three steps or less.
The trademarking process starts with (1) determining whether or not your brand or logo is eligible, (2) deciding what level of protection makes sense for your business, and (3) possibly registering the trademark with the U.S. Patent and Trademark Office (USPTO). First, lets go over the basics of trademarking in the United States:
What is a Trademark?
According to the U.S. patent and trademark department: “A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.”
Similarly, the site defines a service mark as “any word, name, symbol, design, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.”
Ecommerce merchants may think of trademarks — especially registered trademarks — as a way of protecting brand names, taglines, slogans, or logos.
Unregistered Vs. Registered Trademarks
There are essentially two categories or types of trademarks honored in the United States — registered and unregistered.
Unregistered Trademark: Can be used by any business, assuming it is eligible to be a trademark. To identify an unregistered trademark, simply place the trademark symbol (™) after or on the brand name, advertising slogan, or graphic design. Seriously, that’s all you have to do.
Displaying the unregistered trademark with the associated symbol on a website, in emails, on invoices, and on packing slips constitutes use. That is all that is required for unregistered trademarks in the U.S.
In the event of a dispute over a trademark, the company that first used the trademark will win in most circumstances.
Registered Trademark: Is recognized on the U.S. Principal Register and can have a few advantages over an unregistered mark. For example, a registered trademark provides a legal presumption of ownership, which can be a huge help in the event of a trademark dispute. The registered mark makes it easier to file suite against copycats. And registering a mark in the U.S. can help if you want to extend the trademark to other nations. Registered U.S. trademarks use the registered symbol (®).
Do You Need a Trademark?
Most small businesses should at least treat the company name, website name, and any key marketing slogans as unregistered trademarks, adding the trademark symbol (™) next to them and naming them as trademarks in the site footer or about page.
The real question is do you need a registered trademark. For most small ecommerce merchants the answer is probably not. Adding the trademark symbol (™) as described above should provide adequate protection.
There are several very good reasons, however, for registering a trademark:
· You have a niche business that might be copied.
· Your business is growing rapidly and may need more trademark protection.
· You are seeking investors.
· You are applying for a business loan.
· You want to sell your business.
· You are working with an advertising agency to produce promotions.
In all of these cases, having a registered trademark could help. Take as an example the case of seeking investors: a registered trademark is generally considered to have a monetary value, while an unregistered one might not.
How to get a Trademark
The process of trademarking your business name or logo, should take about ten minutes or less for an unregistered trademark or about an hour for a registered trademark. Both types of marks share the first two steps in common.
Step 1: Be Sure You Can Use the Trademark
Before using a brand name or slogan, it’s important to learn whether or not that name is eligible for trademarking in United States. The United States Patent and Trademark Office (USPTO) doesn’t allow trademarks that are descriptive, generic, or likely to cause confusion.
As an example, the USPTO might reject an attempt to use “Appl” or “App-L” as a trademark for a company selling electronics because the name could be confused with Apple.
Similarly, the USPTO might reject a brand name like “Online Store” or “Hat Store” since these are the generic names for the category or type of business.
Visit the USPTO Trademark Electronic Search System (TESS) to help identify whether or not you can trademark your property. Also, it’s a good idea to use Google, Bing, or another search engine to look for other unregistered trademarks similar to yours.
Step 2: Adding an Unregistered Trademark
If your trademark is eligible and there are no similar trademarks already in use in your industry, you can start using it. In fact, the first step in protecting a trademark in the United States is actively using it.
Start adding the trademark symbol (™) immediately on your ecommerce store and website. This is often done in the footer and on documents that you send or email to customers. Notice at the bottom of this blog we have a trademark on one of our slogans: “A shop in minutes, a business for life.”
If you believe that you need the additional protection that registering a trademark can provide you’ll want to move on to step three. Otherwise, you’re done. You’ve successfully begun protecting your brand, slogan, or logo in the United States.
Step 3: Adding a Registered Trademark
You can register your trademark via the online application called the Trademark Electronic Application System (TEAS).
TEAS includes several forms, beginning with the initial application. You’ll need to know what “class” your business or trademark is, based on the more than 1,400 USPTO accepted classes. As an example, many online retail businesses are class 035. The USPTO has a class description search tool to help.
You’ll also need to know basic information about your business, including its legal structure, and your trademark. And in the case of logos or designs, you will need examples that can be uploaded.
TEAS provides a PDF preview of its online form. This form cannot be used to actually submit the registration application, but it is very helpful for preparing before you start the electronic application process.
The TEAS processing fee ranges from $275 to $325. You should also note that it can take the USPTO six months or longer to complete the registration process, so be patient.