How to Protect Your Brand From Day One?

No matter how unique your company name may be, filing an LLC is not enough to protect your brand. Early trademark filings allow you to secure exclusive rights and prevent copycats. From that filing, you can protect your name, logo, and catchphrases on a national level, even internationally.

Many company founders think filing their LLC is enough to protect their brand. This is a costly assumption that leads to delays and more expensive solutions down the road. This is especially true when competitors or other companies in your industry trademark your brand name and logo before you do.

What Brand Protection Actually Covers

Many people think that they are protecting their brand when they file their LLC and their business name with the Secretary of State. That is not the case. When a business formally registers an LLC in a state, it only means that another business cannot register an LLC with the same name in that state. That also means someone can register an LLC in another state with the same name and trademark a name that is identical to yours.

The only way to protect your brand is to file a trademark. A federal trademark means that the name, logo, and other brand elements remain exclusive to your business and protected in all 50 states.

This is especially important for founders outside the U.S. who have a U.S. LLC. If your business name is stolen and trademarked by someone else first, you may have to completely rebrand and lose your LLC name to the poachers, while you may also lose your business name to the infringers.

Why Timing Matters More Than Most Founders Realize

The U.S. trademark system is first-come, first-served. Normally, the first to trademark a name is its owner. The U.S. does allow some leeway for businesses that can prove they were the first to commercially use that name, but that can be a long legal battle that is very costly, with no guarantee that you will win.

If you began using your business name in January and someone else trademarked that name in March, you may contest the trademark to the USPTO, but you will not be guaranteed a win, nor will you be outside the marketing jurisdiction of the trademarked business name.

The safest bet is to trademark a name when you are ready to launch, or as soon as possible after you have publicly launched. The U.S. trademark registration system allows filings on the basis of "intent to use," provided the business owner can show a likelihood that the trademark will be used in the near future.

The Trademark Filing Process: What to Expect

Filing for a trademark is relatively straightforward, although the process does have steps that must be accurate. The USPTO can issue an office action, which is essentially a delay of your trademark application, due to errors in your goods and services identification. Here is an outline of the trademark filing process, accurate to the process.

Step 1: Conduct a trademark clearance search. A trademark clearance search is necessary to ensure your trademark will not be confused with an already existing one. The USPTO's Trademark Center offers the TESS system, which can be used to check for conflicting marks.

Step 2: Choose your filing basis. There are two possible bases for filing with the USPTO. File under Section 1(a) to register a mark that is already in use in commerce. For marks yet to be used in commerce, file under Section 1(b) as "intent to use."

Step 3: Select your International Class(es). The USPTO uses the Nice Classification system, which has 45 classes covering various categories of goods and services. Filing in the correct class is critical. Filing in the wrong one does not protect you where you actually operate.

Step 4: Submit your application electronically. The issuance of trademarks is solely digital from the USPTO. Paper applications are no longer accepted.

Step 5: Wait for the examination. The current USPTO examination wait time is approximately 8 to 10 months from the filing date. The examination is followed by a 30-day opposition period. If there is no opposition, you will receive either a Notice of Allowance (for intent-to-use applications) or a registration certificate.

Common Mistakes Founders Make With Brand Protection

Waiting until revenue is coming in. Most commonly seen in a founder who builds their product, gains customers, and only then files their trademark a year after going to market. Within this period, it is highly possible that a competing business has already filed for that trademark.

Trademarking only the word mark and not the logo. Separate trademarks must be filed for word marks and logo marks. If your brand identity is tied to a specific logo, you must file a trademark for it as well.

Confusing copyright and trademark. Copyright is an automatic protection for original works of creativity. Trademarks protect brand identifiers and require registration to receive federal protection. One does not substitute for the other.

Ignoring domain and social media handles. A registered trademark does not give you rights over the corresponding domain or social media handles. Register those early and separately.

Filing in too few classes. If you have a software product and also provide consulting services, you must file in both Class 42 (software) and Class 35 (business services). Depending on only one class leaves your mark vulnerable.

Not working with a licensed U.S. attorney for the trademark application. As of August 2019, non-U.S. residents are required to be represented by a U.S.-licensed attorney before the USPTO. This is a hard-and-fast rule, and there are no exceptions.

How an LLC Fits Into Your Brand Protection Strategy

An LLC is a good first step, but it is only a liability protection tool, not a brand protection tool. While an LLC name and a trademark do not have to match exactly, they should be as similar as possible. Having "Blue River Tech LLC" as your company name while your trademark application states "Blue River Technologies" creates an inconsistency that can harm your business.

As a rule of thumb, file a trademark application within 60 days of forming your LLC. A trademark should not be filed months later when your brand is already established. The LLC creates the legal entity; the trademark protects the name of that entity.

For non-U.S. residents, this sequence is even more important. You do not need a U.S. trademark to open a business bank account, but you do need an LLC. U.S.-licensed attorneys can help non-U.S. residents file a trademark directly through the USPTO.

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