When determining whether a trademark or patent is necessary—and which would be preferable—important considerations include the details of what the business owners are trying to protect, the resources required to draft and submit proper paperwork, and potential obstacles.
What Is a Trademark?
A trademark is a word, phrase, logo, or design that identifies brands, products, or services. Businesses can obtain both a state- and federal-level trademark.
Registering for a trademark prevents other businesses from registering the same identifying name or feature, which may otherwise deceive potential customers. Registration creates a public record of ownership and permits legal protection and action if another company were to use the trademarked content.
Trademarked work can use the registered trademark symbol (®) to display its official legal status. The symbol (TM) may also be used to denote a trademark, but that means it has not been registered with the U.S. Patent and Trademark Office (USPTO). Still, this may provide common law protection for specific geographic areas, depending on state laws.
A trademark also differs from copyright, which applies to artistic, literary, and intellectual works, such as books, movies, music, or paintings. Copyrighted content may use the symbol ©.
How To Register a Trademark
The first step to register a trademark is to search the USPTO’s Trademark Electronic Search System (TESS) to make sure someone else hasn’t already registered something similar. When it is time to register, users will need to create an account at the USPTO’s Trademark Electronic Application System (TEAS) site, fill out required forms, and pay filing fees depending on the class of goods or services.
In the application, organizations will need to detail:
- The owner of the mark.
- The name and address for the applicant and legal counsel (if applicable).
- A drawing or depiction of the mark.
- The goods or services provided.
- The reason for filing for a trademark.
- A specimen for use if the owner plans to use their trademark to conduct commerce. (A specimen is a sample of the way the business will display a trademark, such as in product labeling.)
In some cases, registering a trademark will not require an attorney. However, it may be helpful for applicants to work with an individual who knows the process and can thoroughly handle the trademark clearance search.
As of August 2023, the USPTO estimates that the registration process typically takes eight and a half months to generate the first action and more than one year to complete the full process. If a business owner makes a mistake somewhere in the filing process, receiving approval for a trademark may add months to the process. If one business completes the trademark registration process ahead of another business filing for the same trademark, the first business to complete the process will be awarded the trademark.
When choosing to register a state trademark, organizations will also have to apply with the applicable state’s trademark office.
What Does a Trademark Protect?
A trademark generally protects brand names and logos that are used on goods or services. When a business obtains a trademark, it has the legal right to sue another company that uses its trademark without permission.
Examples of Trademarks
Trademarks can apply to a variety of items, including, but not limited to:
- Brand names
- Product names
- Logos
- Slogans
- Stylized font
- Symbols
- Characters
- Names and symbols
- Product packaging
- Sounds
- Colors
What Is a Patent?
Whereas trademarks secure the use of identifying features, patents protect inventions. A patent provides an inventor with the exclusive ability to sell, market, or produce an item without competition. It often takes a significant investment in research and development to bring products to market, so a patent affirms ownership and allows for exclusive rights to the protected content for a set period.
Patents generally last for 20 years. After expiration, the information in the original patent is free for use by anyone.
While organizations cannot patent an idea, they can patent an invention. Additionally, they may patent an improvement to an existing product, provided the resulting product is significantly different. For example, a company cannot make simple cosmetic changes to an existing product, such as altering color or texture, and patent the resulting item.
There are three different types of patents:
- Design patents for new, original, and ornamental designs.
- Utility patents covering new processes related to the manufacturing of a product, such as using new materials or finding new uses for materials.
- Plant patents for scientists who create or discover ways to reproduce plants and develop new varieties.
How To File a Patent
Organizations can file a patent to protect their rights, but they will have to prove that their invention, design, process, or plant has not already been publicly disclosed. This includes a preliminary search of the patent database in the U.S. and internationally, along with classifications.
Searches can be complex, so the USPTO recommends filers hire an attorney or agent licensed to practice before the USPTO conducts the investigation and guides the filing process. Once organizations have determined the eligibility and type of patent, they will need to file an application using the USPTO’s Electronic Filing System (EFS-Web). Required information will include:
- A written description: The description must be written clearly, yet comprehensive enough that someone skilled in the field would be able to use or create the invention on their own. This includes the technical details about the product’s use and how it differs from what already exists.
- Drawings: Drawings are recommended to illustrate the product, design, or process for reference.
- Claims: Claims detail exactly what the filer wishes to protect. Each claim includes a preamble (known features) and characterization (new and invented product features). Filers may need to include independent claims validating the information.
- An abstract: An abstract summarizes the technical problems that exist, how an invention solves those problems, and the primary uses of the invention.
Depending on the type of patent filed, the cost can start at several thousand dollars or it can be more than $20,000, according to the USPTO. It takes an average of 18 months from the filing date to grant a patent.
Many inventors choose to file a provisional patent to ensure they have filed the first claim. A provisional patent allows companies to label their products as patent-pending and gives them up to 12 months to formally file for a patent.
What Does a Patent Protect?
A patent prevents others from making, using, selling, or importing a patented invention. A patent holder can file an infringement claim in federal district court if they believe someone has violated their exclusive rights.
Learn More About Patents, Trademarks, and the Law
Columbia Law School’s online course, A Legal Toolkit for Starting and Scaling Your Business, teaches business owners the tools to navigate legal complexities and processes, like registering trademarks and patents, to help build and legally protect their businesses.