Benefits of Trademark Registration: USPTO (U.S. Patent and Trademark Office) defines a trademark as a word, name, or symbol that identifies and distinguishes a brand’s products from others.

Similarly, a trademark, according to CIPO (Canadian Intellectual Property Office), is a sign or combination of signs used or proposed to be used by a person to distinguish their goods or services from those of others.

A trademark, therefore, is a crucial branding element of a company as it significantly affects a business’ reputation. For one, it allows a company to accumulate significant goodwill over time. The best examples include Google, Apple, and McDonald’s.

What are Trademark Rights?

Many sellers use trademarks in eCommerce. This automatically causes trademark rights to arise. These rights apply to the sales of goods and services by a particular seller. Trademark rights are granted to the seller after fulfilling specific requirements. This ensures that the seller’s trademark cannot be adopted or used by anyone else in his geographic area.

The question is: since these rights automatically arise, why are there additional steps needed to be taken to register your trademark?

Let’s take the matter to its correct context. Trademark rights are granted to a seller after fulfilling specific requirements. This ensures that the seller’s trademark cannot be adopted or used by anyone else in his geographic area.

Benefits of Trademark Registration: Trademark registration is of utmost importance in the current age of the internet.  As such, the registration process enhances the value of the registered company’s brand.

It offers the registrant-seller greater rights and protection as compared to an unregistered seller.  In a more legal setting, a brand that has an active registration is easy to enforce.

How Does Trademark Registration Add to a Brand’s Value?

Companies with trademark registration get to enjoy various benefits. These benefits are not available to an unregistered brand. Let’s discuss some of the benefits of trademark registration:

1.     Exclusive Rights Over the Trademark Usage:

A trademark registration gives the brand owner the exclusive rights to use the mark in his registration country. A company’s trademark can be used for ten years in the country it has been registered in. In Canada and the US, you need to get your registration renewed every ten years. The policy is the same for jurisdictions like the EU, UK, Australia, Germany, Mexico, China, etc.

An unregistered trademark can only be used within a confined geographic area. The owners cannot establish goodwill and reputation beyond that particular region. Therefore, brands who want to scale up their business with time go for trademark registration.

2.     Countrywide Priority:

Trademark registered brands get nationwide priority. They use their trademark to get recognized all across the nation. Trademark registration ensures that any other company does not use a registered brand’s mark all across the country.

On the other hand, an unregistered trademark may prevent its mark within only a limited geographic region. Trademark registration is of utmost importance in the current age of the internet. Today, we come across multiple companies with similar names.

Trademark registration is essential for those sellers who aim to expand their business in the future. Exclusive nationwide brand name rights are far more useful than having rights limited to a particular area.

3.     Adds to Your Brand’s Reputation:

If you want to make your brand one-of-its-kind, then you should consider getting your trademark registered. It is one of the most valuable assets for any company. It adds to the value of the associated brand.

If there is one thing you must remember among the information found in this article, that is: a trademark is a valuable asset for any company.

Common wisdom dictates that for those things we value, we protect. You protect your trademark by securing a registration for it.

Trademark is your business’ identity; it serves as the face of the company.

It allows consumers to identify your goods through the brand name, and helps the brand to establish its reputation in the market.

A registered trademark ensures that no other sellers get to use your mark to sell their products. In other words, it prevents another seller from using a confusingly similar mark.

The trademark owners can sell or license the trademark for money, thus a trademark can be an important tool how to make money. Check our article: Five Interesting Ways You Can Make Money with Trademarks.

Other Benefits of Trademark Registration

4.     Reduction in Enforcement Costs:

Enforcing a trademark can be frustrating, economically and emotionally speaking. Fortunately, registering a trademark can reduce enforcement cost.

• Public Ownership Record

The Patent and Trademark Office in every country maintains a public record of the registrant’s trademark ownership. It has a public database of registration certificate registered brands own.

This record serves as a notice for potential infringers that the registrant owns the mark and only he has the right to use it nationwide. The public record ensures that no other seller gets to adopt a similar mark.

• Incontestable Status After a Specific Period

A registered trademark earns an incontestable status after a fixed period. In the US and Canada, this period is five (5) years. The trademark becomes incontestable after five years of registration. This ensures several aspects of the trademark cannot be challenged.

Incontestable status can be achieved if the registrant files a sworn statement to request a “super trademark,” or file a ”petition for incontestability.” This must be done at an appropriate time. It allows brand owners to do away with the hassle of proving their exclusive rights to the trademark.

When a trademark earns an “incontestable status,” it is generally immune from challenge. In simpler words, a third-party would have a difficult situation to cancel a registered trademark.

• Actions Against Confusingly Similar Marks

As a requirement, a trademark application to register must not resemble any prior-filed application or registration. As such, the system protects a prior filed or registered trademark from a similar junior mark. This serves as an additional protective layer for registered trademark sellers.

As soon as a trademark is registered, it attains a presumptive validity. What this means is that a challenger has the burden of proof to establish that a registered mark must be cancelled. Absent substantive evidence for cancellation, any legal challenge of any registered trademark is bound to fail.

5.     Easier to Deal with Counterfeiters:

Because a registered trademark is easily enforceable, a registrant-seller has the cause of action to take legal actions against counterfeiters. Under the law, if a counterfeiter is found guilty of trademark infringement, the same may be held liable for damages which can be thousands of dollars.

As a registrant, you can confidently send counterfeiters cease-and-desist letters to convince them to retract their infringing actions under the penalty of being sued for trademark infringement.

Securing a registered trademark, is a step to effectively guard your company’s reputation.

6.     Protects Brands from Cyber-Squatters:

Trademark registrant sellers can participate in Trademark Clearinghouse. It is the main registered trademark data repository. The trademarks included in this record are either protected by treaty or statute or validated by the court.

This database serves as a source of information regarding trademarks for domain registries and registrars. It also enables registered sellers to apply for mark along with a new gTLD (Generic Top-Level Domain).

According to Canadian Trademark Registration policies, the registered brand is allowed to register for a corresponding ca. This means the registered eCommerce seller claims the domain name before it is made available to the public.

7.     Obtain registration in Other Countries:

Trademark registration allows sellers to obtain registration in other countries as well.

You can get your brand identified internationally with an international Trademark protection; you can apply to register for the trademark in countries that are a part of “The Madrid Protocol” agreement.

Your first trademark is called the national trademark. You can extend its protection by filing an international application to any country-member of the agreement. An international application is dependent on its national trademark application or registration.  Therefore, an international application must be identical in both the mark and the associated goods/or services.

8.     Prevent the Importation of Infringing Products and may prevent export of infringing products (China):

Brands can prevent the importation of trademark infringing goods by filing registration with the customer service. This protects brands against the importation of infringing foreign products.

Sellers with the registered trademark can apply to record their trademarks with Customs and Border Protection in the U.S. and Canada.

Customs and border protection blocks imported goods which infringe upon a registered trademark. These goods are monitored, seized, and detained.

Benefits of Trademark Registration in China

In China a registered trademark can be recorded with the Customs agency and then any other goods bearing registered trademark name will not be allowed to leave China (cannot be exported). This can be devastating to Amazon sellers who source their products in China and fail to register their trademark there.

9.     Used for online sales platforms:

Various online eCommerce platforms allow brands to police the products sold under the owner’s mark. Trademarked brands can control the availability of their products all across these eCommerce platforms.

Trademark owners can apply for Amazon brand Registry to gain more control over their items. It also makes it easy for them to find infringers or counterfeiters. Amazon Brand Registry Program provides brand owners access to brand analytics. The seller needs to get his brand mark registered to qualify for participation in the Brand Registry Program.

• Why should Amazon sellers get their trademark registered?

Benefits of Trademark Registration on Amazon:

Amazon sellers can get into the Amazon Brand Registry program by getting their trademark registered. According to the latest Amazon Brand Registry program requirements, a seller needs to have his trademark registered. By doing so, he will gain full control of his products and services.

Amazon Brand Registry allows Amazon sellers to protect their registered trademarks on Amazon. This allows registered brands to create a trustworthy experience for their customers. When a brand registers with the Amazon Brand Registry program, it gets complete access to a range of powerful tools. These tools include:

• Proprietary text
• Image search
• IPR violation report based predictive automation
• Video content posting
• Increased control over product listings registered under the brand name

Amazon introduces this program to make it easier for the brands to manage listings without being hijacked. There are various benefits of getting your brand registered with the Amazon Brand Registry Program.

Some of them include managing better product images, titles, descriptions and eliminating matching errors with similar companies that occur when products are listed. It offers ease to list high volume products and services. It allows flagging counterfeiter items, which decreases your product’s visibility. You can also get such fake sellers removed from the platform.

Relationship Between Amazon Brand Registry and Trademark Registration:

Only the brands with registered trademarks can apply to participate in the Amazon Brand Registry program.

Nobody knows the needs of a business better than the business owner. You can make sure that your products and services remain competitive in the internet marketplace by participating in the Brand Registry Program. However, you require a registered trademark to avail those benefits.

10.           Public notice:

The Trademark Office of each country will maintain a database of filed and registered trademarks. Most business owners will do trademark search (by checking Trademark Office database) before adopting trademark for their business.

Your registered trademark serves as public notice that its owner has exclusive right to use the mark in the country of registration.  Trademark registration often keeps others away from using or filing a trademark that is the same or similar to a registered trademark.

11.           Provides a ground for the opposition:

A registered trademark provides you with a ground for opposition. If you noticed that a 3^rd party filed a similar trademark, most likely Trademark Office will refuse such registration. However, if not refused, you will be able to file an opposition to prevent a similar trademark from getting registered. Your own registered trademark will be a ground for opposition, i.e. you may state that the offender’s filed trademark is too close to your own registered trademark. As a result, it’s possible that the 3^rd party’s similar trademark may be refused by the Trademark Opposition Board.

Conclusion

In this technology-driven world, the internet is the biggest marketplace. All across the globe, brands are putting their best foot forward to increase the visibility of their products. However, with more brands going online, the risk of counterfeiting is also increasing. Trademark registration is the best solution to get your brand identified among your target audience while effectively preventing others from unauthorized use of your brand.

It sets a brand apart from other sellers in the industry. If you are an Amazon seller, a registered trademark will help you enroll in the Amazon Brand Registry program. This will win you a competitive advantage over other sellers in the market.

Do not forget that the cost of NOT registering the trademark is really high and may actually lose you money in the long run. Trademark registration is the cheapest way to protect your most valuable asset – your brand!

Before we dive into how you can protect your trademarks and logos, let’s first answer the simple question: what are trademarks?

Often cropping up in marketing jargon, a ‘trademark’ is any word, emblem, animation, or symbol licensed to be used only by you. Trademarks are a part of a company’s intellectual property and play a vital role in shaping their identity. The brand identity of a company in this age of cutthroat competition sets them apart from their competition.

This means any phrases, font, or color that an average customer may associate with your brand is proof that you have been successful in imprinting your brand on the subconscious consumer mind.

Consider, for example, a simple tick mark. You may look at and think of a graded test paper, but you would directly associate the same tick mark on a wall or a print ad with the popular sportswear giant Nike. Similarly, the Starbucks symbol is universally popular that is recognizable by people everywhere. Such is the undeniable prowess of a trademark.

These trademark emblems also help buyers know that their consumer interactions take place with the correct organization. Logos such as Target, Apple, and Google are valued at the billion-dollar mark, and the wealth around these trademarks was amassed through dedicated effort to build a unique brand.

After you have licensed your logo and the paperwork is complete, if you find some other corporate (or small business) use your trademarked slogan or symbol, you have the right to take legal action against them. Doing things correctly the first time can help you save a fortune in legal fees and therapy sessions (lawsuits aren’t fun).

Being the exclusive owner of your own trademark can help you earn a profit the way some other unparalleled organizations make. You might have heard of Amazon, perhaps?

Here are some curious ways in which your registered trademark can earn money for you.

1.  When You Sell the Business

This one is for the major mergers and acquisitions that businesses go through, changing the economic landscape for every stakeholder involved. When selling your business to another company, make sure to evaluate the equity your brand name or trademark image has garnered over the duration since its launch.

A ballpark estimate of the monetary value of your trademark can be calculated by the financial statements, public financial statements of competitors, and the royalties (if any) received by your company.

2. Licensing Your Trademark

When you license your trademark, you essentially allow other companies or businesses to use your logo for an advertisement or CSR campaign. These are typically done to use an event such as a sports event or a fundraising campaign to showcase your brand in a positive light.

An easy example of this would be the Emirates logo on the Manchester United jersey (remember Ronaldo in ’07?) and the recent marketing genius of the Burger King logo emblazoned on jerseys of the Stevenage football club.

It could also include magnified exhibitions of the logos, for example, fractions of the Pepsi logo printed on seats in a stadium combining to form a life-sized version of the typically coin-sized logo.

This is one of the many ways brands that now rule the world have advertised their products to the masses without investing in a video or print ad. Included in the Public Relations part of the broad marketing spectrum, these tactics embed the brand into a consumer’s conscious in an exceptionally tacit way.

3.  Using the Trademark as Collateral

Because your trademark is a vital part of your company and a prime example of its intellectual capital, it makes sense that it be considered an asset.

Collaterals are assets owned by a person or an organization that can be surrendered as security when taking out a loan. Conventional ways in which collaterals are used are when a borrower offers their car up in exchange for an equivalent value loan.

When you are confident that your brand name or slogan is worth a great deal and can be propositioned as collateral, you can take out a loan in exchange for it. The terms and conditions may differ from those of a typical loan, but these depend on the equity your trademark has gathered and the magnitude of the loan being requested.

When you are ready to return the loan, you can easily take back your asset and use it as you did before taking the loan out.

Usually, trademark security agreements have to be recorded with the relevant Trademark Office so that the general public can see if a trademark is used as collateral.

4.  Monetizing the Trademark by Crowdfunding

Crowdfunding is the coolest new way to get people to invest in your idea, product, or business without ever launching IPOs. Essentially, the prospective business owner puts a pitch online for anyone and everyone to see. This pitch also has the option for interested individuals to donate or invest money into the idea they see potential in.

How can we get this ingenious idea to work in our favor? Simply treat your logo like a sales pitch that you need to be monetized. Put up the logo or trademark that you want to earn money on one of the many crowd-funding sites online and wait for the magic to happen.

Make sure that all the legal bases are covered. This means that each part of the intellectual property- the brand name, tag line, and logo are trademarked and legally yours. This can ensure that it prevents somebody else from commercializing your effort and the ability for their own ulterior motives.

A lot can go wrong if you technically own a trademark but do not have the authorization to prevent somebody else from using it.

5.  Co-branding With Another Company

Co-branding is a mutually beneficial arrangement in which a product or service launched has more than one brand as partners. Often denoted by “partner A x partner B,” these are some popular ways to plug your trademark logos to earn some green for you.

Recent examples of this include the Morphe Cosmetics launch on an eyeshadow palette with controversial Youtuber James Charles. The product was an instant hit amongst makeup fanatics, and the profits were reaped by both the parties involved.

Rome was not built in a day, but the bricks were laid every day. No billion (or even trillion) dollar company had that many zeroes in their bottom line when they first started. Most weren’t big hits even a decade after their existence in the market. However, you have to work sincerely every day till you feel satisfied with the results.

The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify. In re Bose Corp., 192 USPQ at 215

A matter that functions as a means to identify and distinguish one’s goods and/or services from others is called a trademark; and therefore, eligible for federal registration.

On the opposite, if a matter merely conveys information about the goods and/or services, it cannot be registered as a trademark. The latter is called a “merely informational matter.”

How to Identify a “Merely Informational Matter”?

The United States Patent and Trademark Office assesses if a matter, being applied for as a trademark, is a trademark within the meaning of the Lanham Act or one that constitutes as a merely informational matter. In plain English, the Trademarks Office will review your trademark to identify whether it’s capable to function as a trademark, i.e. a source indicator.

First, as a guiding star, the Supreme Court has established a test to determine if a matter is merely informational: it is to ask the question: “Would the relevant public primarily perceive a given matter as one that merely communicates information relative to certain goods and/or services?” If the answer is in the positive, then we have a mere information matter that is not registrable as a trademark.

What are the Types of the Merely Informational Matter?

Under the above-stated test, the USPTO identified three types of merely informational matters: (1) matters that only convey information about the goods and/or services; (2) matters that only offer widely used messages; and (3) matters that merely covey social, political, religious and similar messages.

The following are illustrative cases where the USPTO refused applied-for marks as they are merely informational matters, not trademarks.

• The matter “FRAGILE” was refused registration because it merely informs consumers of the fragility of the item to which the label is attached to. It can hardly pass as a source indicator.
• The familiar phrase “WHY PAY MORE” was held as ineligible for trademark registration because it is a common advertising slogan across a variety of goods and/or services; thus, did not function as a trademark. The same refusal applied to phrases such as “BEST BEER IN AMERICA” and many more.
• The term “ALL HAIL THE LORD” merely functions as a religious message rather than a trademark.
• The slogan BLACK LIVES MATTER has recently been refused registration since it “is a commonly used message that conveys support for rallies, protests, or movements dedicates to raising awareness of civil rights and protesting police violence and conveying the message of support for the same.” USPTO has also added that “the public would not perceive the slogan “BLACK LIVES MATTER” as a source-identifying matter that identifies applicant alone as the source of the services but rather as an expression of support for anti-violence advocates and civil rights groups”. The full refusal can be read here.

Failure-to-Function Refusal

Just as matters, which merely provide information to the public, is refused registration because it fails to function as a trademark, the same is true with grade designation or model numbers. These matters merely describe products; they do not function as a trademark.

In a practical sense, if one were to use a model number as a trademark, consumers would perceive it as only indicating a certain level of quality or improvement in a given product.  As to the source, the consumers would be left clueless. As such, such a designation is not eligible for registration.

Remedy

The advancement of business interests in mind, what can one do to use the kind of matters earlier-discusses without a potential failure-to-function refusal?

Fortunately, the rules admit a fix. Since said refusal pertains only to designation consisting entirely of merely information, one may simply incorporate these unregistrable matters to a trademark that is capable of functioning as a source indicator, i.e., “UNNAA: WHY PAY MORE” for supermarket services, where UNAA is the registrable part.

However, the unregistrable matter must be disclaimed. A disclaimer is a statement signifying no claim exclusive right to the unregistrable matter.

If you are in doubt whether your trademark is registrable, please ask us for a free no-obligation trademark search.

Trademark Suspension

Within 3 months after filing a trademark application with the United States Patent and Trademark Office (USPTO), an examiner examines the application to see if it meets the requirements for a successful registration. If it does, the examiner will approve it for publication.

But what happens if it doesn’t? If the application fails to satisfy all the requirements, the examining attorney will issue an office action (aka objection).

Sometimes the reason for an objection is administrative, i.e. an applicant has to fix the description of the goods and services or provide a disclaimer.

In other cases, a USTPO attorney will refuse your trademark for other reasons: e.g. if a mark is considered descriptive or if a confusingly similar trademark is found that is considered an obstacle to registration of your trademark.

Sometimes, through a notice, your application is put on a hold and the notice is called “Trademark Suspension”.

Now, when you receive an office action (aka objection), you can respond and attempt to overcome the objection. But when your application is suspended, your hands are tied.

So, in plain English, suspension of your trademark means that your trademark application is not going to be processed further and is put on hold until the reason for the suspension is removed.

The most frustrating thing is you can’t do anything to get rid of the reasons but to wait. It could mean waiting for months or even years with no eventual guarantee of success.

Trademark Suspension: The Reasons for Suspensions:

A trademark application can be suspended on several grounds. Two most common grounds are –

1. Suspension because of a prior-filed potentially confusingly similar application:
   In the examination stage, if the examiner finds a trademark that she believes is confusingly similar to your trademark, but this prior trademark is not registered yet, she puts your trademark into suspension.The point to note is, this happens even before testing the actual likelihood of confusion i.e. whether your mark is indeed confusingly similar to the previous mark or not. The examiner just defers the judgment until the previously filed application is registered or abandoned.Why do they do that? Our guess is to save government resources and time, but this, unfortunately, doesn’t help applicants.

   Example: a trademark for PURASOOTHE for bath herbs, food supplements, and medical devices (classes 3, 5, and 10) was suspended for almost 2 years because of PURA for class 11 air purifiers and PURA for vitamins. Eventually, one of the marks got registered and the other abandoned. The examiner then reconsidered his position and decided to approve the PURASOOTHE mark. Unfortunately, a lot of time was lost.

   So frustrating! right?

   Unfortunately, this is one of the most common reasons for a trademark suspension.

2. Suspension because of a foreign application:This type of suspension happens to non-US applicants who have filed their US trademark on the basis of the application or registration in their home country.If you add the reliance on your foreign application to the US application, your US application will be suspended until the foreign applications get registered.

You are maybe thinking then: why adding the reliance?

Well, by adding the basis of the foreign application, you can bypass the requirement of using the mark in the US which is otherwise a MUST for obtaining registration in the US.

So, this type of suspension essentially is not that bad. You are waiting until your foreign application registers and once it does, you will simply need to provide a copy of the registration certificate and your US trademark will proceed to registration without having to file a Statement of Use.

What Happens Once an Application is Suspended?

Further actions depend on the reason for the suspension.

If an application is suspended because of a prior-filed application, it typically does not require any response. But of course, you can file a response and try to convince the examiner that confusion between your mark and the cited mark is unlikely.

Practical tip: If the marks are indeed similar, it’s recommended NOT to file any response and wait to see what happens to the other mark. If it’s abandoned, then you don’t have to provide an argument and your mark will register.

Practical tip: If the marks are not similar and you have no desire to wait on the sidelines for months or years, it’s a good idea to call the assigned USPTO examiner first to try and build a rapport and to see if he/she is going to review your response against possible confusion. After a phone call, the chances are higher than a written response against possible confusion will actually be read and not just put away.

In case, the USPTO examiner is convinced that your mark is not confusingly similar to the prior-filed application, your application will enter into the next phase of the application process regardless of the outcome of the prior-filed trademark.

If your application is suspended because of a foreign application, you will have to wait until the application in your home country gets registered. Once it does, you will simply submit the registration certificate to the US, and then the examiner will move it to the next stage as appropriate.

The examiner, however, will periodically (every 6 months) inquire into the status of your foreign application by sending a Notice of Suspension Inquiry. You will have to respond to that notice within a 6-month deadline. Otherwise, the application will be abandoned.

So, if your foreign application is still pending at the time of the inquiry, you need to file a response and request another 6-month suspension until your foreign application matures to registration.

When will the Suspension be Removed and What Happens Afterwards?

Well, the suspension imposed on the ground of a prior-filed application is removed when the prior-filed application.

• Is registered. OR,
• Is withdrawn/abandoned. OR,
• Is not relevant to your application anymore.

Once the suspension of an application is removed, it will be examined again to see if the application meets all requirement, and if there are any conflicting trademarks.

Practical tip: Examiners are not always quick to remove the suspension, so if the status of a prior-filed trademark changed and you want to inform the examiner about it, you can respond to the notice of suspension and ask the examiner to review the file. This may save you a month or two.

If the examiner is satisfied, it will be approved for publication just like a regular application.

On the other hand, if the suspension was due to a foreign application, the suspension will be withdrawn in two ways.

1. By submitting the foreign registration certificate. OR,
2. By removing the reliance on the foreign application.

If the application is taken out from suspension by (a), it will soon proceed to registration.

However, for (b), you will have to file a Statement of Use to prove that you are using the mark in the US. Then it will proceed from there.

Still, confused? Want to discuss the notice of suspension for your mark? Call Trademark Angel and we’ll be happy to talk to you, free of charge.

A lot of our clients get confused when trying to understand the difference between a company name and a trademark. Are they the same? What about the business name? And the domain name? Does it have to match the company name and trademark? There are a lot of questions and figuring these all out is not easy.

• Company name: Legal name of the company, either registered federally or in a certain state (or province in Canada).

Our company name is Angel Trademark Services International Ltd.

Does our company name have to match the trademark? No. It does not. Do our clients really care or have to remember how our company is called? No. They don’t care. What happens if the company closes down? Will the trademark die? No. A trademark can be transferred to another entity (person or legal entity).

In fact, we already transferred our TRADEMARK ANGEL trademark from our Canadian company Trademark Angel Inc. to Angel Trademark Services International Ltd. during the restructuring process.  Did our clients know about this or care? No.

The purpose of the trademark is to help your clients to identify your brand with your business. If the business goes through transformation, restructuring, or if it’s sold in many cases clients are not even aware of this. As long as there is no disruption of the operations, nobody will even notice, unless you notify your clients yourself.

Note: one company may own more than one brand and may do business under more than one name.

• Business name, trade name, operating name, or doing business as Name under which you conduct your business.

Our company Angel Trademark Services International Ltd. Is doing business as Trademark Angel. A company is said to be “doing business as” when the name under which they operate their business differs from its legal or registered name.

In many instances, filing for a DBA is the least expensive way to use a business name (without incorporating).

So, if you don’t have an LLC or corporation set up, consider registering a DBA.

Please note that you cannot add the wording Corp., Ltd. or Inc. after you register your DBA in order not to mislead the public.

You can also use a dba if you want to operate more than one business without having to open multiple companies or LLCs.

For example, consider this: Michael set up a corporation and called MC Unique Labs Design Corp. Michael plans to offer accounting services under a DBA Account Tech Wizz, cleaning services under a DBA Cleaning Well Wizz and painting services under Painting Incredi Wizz. By doing this, he will eliminate the need to register 3 separate business entities (unless of course there is another reason to do this).

Can you file a trademark under a dba/operating name alone? No. A full legal name is required.

For better illustration, we’ll show you the difference based on our own trademark.

• Trademark: A trademark may be one word, a combination of words, or logos (or even sounds and smells!) used to distinguish/differentiate your products or services from those of other entities.

Our trademark is TRADEMARK ANGEL. We also have a logo that you’ve probably seen (the logo is shown in the top left corner of the website: )

Going to our above example, Michael may want to consider the following trademarks:

1. Account Tech Wizz for accounting services. The owner will be: MC Unique Labs Design Corp. or can also file in the name of MC Unique Labs Design Corp. dba Account Tech Wizz
2. Cleaning Well Wizz for cleaning services. The owner will be: MC Unique Labs Design Corp. or can also file in the name of MC Unique Labs Design Corp. dba Cleaning Well Wizz
3. Painting Incredi Wizz for painting services. The owner will be: MC Unique Labs Design Corp. or can also file in the name of MC Unique Labs Design Corp. dba Painting Incredi Wizz

Domain name: Address/location of your website on the web.

Our domain name is trademarkangel.com

And trademarkangel.ca

And trademarkangle.com (as the name is commonly misspelled).

Try to obtain a few domain names with different top-level extensions and think about possible mis-spellings.

In Michael’s example, he should try to secure at least 3 domain names:

AccountTechWizz.com, CleaningWellWizz.com, and PaintingIncrediWizz

What Is a Cease and Desist Letter?

A trademark cease and desist letter is sent to an alleged offender, which describes the misconduct by the wrongdoer and demands that the misconduct is ceased immediately. This notice is sent to inform the wrongdoer that legal action may be taken if the misconduct continues. These letters are commonly written by attorneys (although they don’t have to be) and can often be a simple and effective solution to a legal conflict.

Cease and Desist letters are sent directly to the individual or businesses who are infringing upon your rights. They are also known as demand letters or stop harassment letters and are not filed in court. Their primary purpose is to notify the wrongdoer about his or her illegal activities and that they should be immediately stopped. It only serves as an essential warning and does not have immediate legal consequences. It is often the first step towards resolving disputes.

The process of litigation is usually time and resource-intensive for all the parties involved. Hence, sending a Cease and Desist letter simplifies the process and is a convenient method to take action.

Additionally, sending this letter can prove beneficial in any future court case as it provides evidence that the party had been notified beforehand and continued their illegal behavior. In cases of trademark infringement, this can result in added damages if the case is taken to court.

When are Cease and Desist Letters Used?

Cease and Desist letters can be used in a variety of situations to defend your legal rights. Some common examples of when these letters are used are listed below.

• Infringement of intellectual property: Any dispute involving trademark, copyright, or patent infringement.
• Breach of contract: If a party violates the terms of agreement of a contract they initially signed, these letters can be sent to resolve the conflict.

  

• Slander and libel: If someone is making defamatory or false claims about you or your business, these letters can be sent to put an end to it.
• Debt collection harassment: If debt collectors are harassing you while collecting debt, they are infringing your rights provided by the state and federal laws, and a Cease and Desist letter can be sent to them.
• Harassment: If you or your business is being harassed by someone through repeated phone calls or stalking, these letters can be sent to assert your rights.
• Disclosure of confidential information: If a party breaches a non-disclosure agreement, a letter of Cease and Desist can be sent to prevent any further revelations by them.

Trademark Cease and Desist Letters

Trademark Cease and Desist letters are commonly sent by parties who have prior use of a similar trademark. They are structured with some ordered demands to end the use of the trademark by the other party. These letters begin by outlining the trademark rights of the owner and a brief description of the trademark in question. It also contains information regarding the associated goods and services with the trademark, the date it was first used by the owner, and an analysis of the extent to which the owner has rights over it.

The letter then goes on to describe the infringer’s trademark, associated goods, and services and provide arguments on why the infringer’s actions are illegal. The letter will then list a set of demands, which include the immediate termination of the use of the trademark, withdrawal of the filed trademark, removing the trademark name/logo from all existing products and services, possibly even paying profits, and a specific date for the infringer’s response to these demands.

What Should I Do If I Get A Cease and Desist Letter About My Trademark?

If you receive a Cease and Desist letter regarding trademark infringement, you must act smartly. Such allegations are grave and can lead to negative consequences for your business. It is also crucial that you avoid any premature curbing into the demands of someone who is attempting to stop you from using your brand name or logo. Therefore, a strong course of action is required to avoid an angry tirade with the sender of the letter. The key is to follow these steps:

Assess the situation

Sometimes individuals or businesses ask their attorneys to send Cease and Desist letters based on misguided information. They are misinformed regarding the rights to the trademark in question and might not even have registered for it. These people often use Cease and Desist letters to scare off their competition so that they give in to their demands with the threat of legal action. It is a common tactic used to bully other companies into compliance without any legal basis. Therefore, you must investigate the matter diligently before taking any further action.

You should read the letter thoroughly and note what rights the sender is claiming to own regarding the trademark. If the sender has a legitimate claim over the trademark, they will inform you of the details of the registered trademark issued by a government authority. You can recheck the details in the Patent and Trademark office database.

Consult Your Trademark Specialist

It is crucial that you take the letter seriously and do not dismiss it as an empty threat. These letters are often a

precursor to a lawsuit that could have serious consequences. Gather all information regarding the allegations made on you and try to recall what events may have led to it. You must provide your attorney with all the facts so that they can handle the situation favorably.

Trademark attorneys are well equipped to deal with all situations and will provide you with effective guidance regarding the matter. They will try to reach out to the sender of the letter to obtain additional information and formulate an effective response for the sender. Attorneys will ensure that your legal rights are defended.

Identify The Best Course of Action

When you receive such a letter, it is important to set some clear objectives for yourself. You have to identify what outcome will be acceptable to you. This could either be negotiating a settlement for some fee, making a transaction that benefits both parties or not giving in to the demands of the sender, and possibly going to court.

Make sure that your attorney is on board with your decision. It will help you navigate through the process and plan your budget for your decided course of action.

Finally, if you ever receive a Cease and Desist letter, it is important that you think objectively and not panic. You must investigate the allegations upon you and get proper legal advice.

Always remember that trademark infringement is a serious allegation, and the matter should be taken seriously. You should ensure that your business is compliant with all required legal obligations so that such situations can be avoided. Although, Cease and Desist letters may not lead towards a court case, but the risk of getting sued can not be disregarded.

If you have received a Cease and Desist Letter or want to send one, feel free to contact Trademark Angel. We will either be able to help you directly by assigning one of our attorneys or refer your to the best possible attorney in our wide network of lawyers and attorneys.