6 Tips on Trademarks for Small Business Owners

Happy Hump Day! Today we have a special guest blog from one of our members, Salma Benkabbou, of The Benkabbou Law Firm, PLLC. Salma is a rockstar Lawyer based in Downtown Tampa who focuses on Business Law. She loves helping small business owners make sure their business is protected. We spend so much time and money curating our brand and making sure our photos, website copy, Instagram, logo, & more are attracting the right client— but why do we often cut corners on legal help? Ensuring our business is protected is one of the most important things when it comes to building a strong foundation for our new baby. It could be the cost— it could be that we don’t know who to turn to for business legal help, but not consulting with a Lawyer could end up costing you not just a ton of money, but it could also put you out of business. Let’s pass the baton to Salma so she can share her top 6 tips for being informed about what it’ll take to protect your biz & add this building block to your foundation. You can also find her on Instagram. Enjoy Salma’s tips & stay boss. xx -G

Salma Benkabbou of The Benkabbou Law Firm, PLLC

Before we can discuss what you should know about Trademarks, let’s first define them. Trademarks are any names, marks or any device used to identify a brand. Trademarks are not just limited to names and logos, they can also include slogans, colors, smells, sounds, product packaging or any identifying feature of a brand that would help a consumer identify it in commerce. A trademark is an asset to your business as it is a type of intellectual property that holds monetary value.

1 // Choose a strong name. 

If you come up with a name that is already in use by another brand that’s in your same relevant market, you will not be able to register the mark as your own. The sad part is that the name doesn’t even have to be the exact same. Any “likelihood of confusion” with another trademark in the same market can mean years in litigation. This is a legal analysis, not what you think causes a “likelihood of confusion.” Only rely on an attorney for this analysis. 

2 // Understand the loopholes. 

You can have the same name as another business without causing a “likelihood of confusion” if the names represent brands in two different consumer markets. There are 45 relevant markets within the United States Patent and Trademark Office (USPTO) under which a trademark can be registered. The markets are identified by “international class” numbers, so it is important to identify under which markets your trademarks could fall. This is heavy stuff, so you would need to enlist some legal help to conduct a legal analysis.

3 // Know how to register. 

You can only register one Trademark at a time in a single application. For example, if you have a name, a logo and a combination of name and logo together, then those are actually 3 separate Trademarks. So, you will need 3 separate applications to fully protect your brand. 

4 // Know before you start.

Before you start, know that you can protect your trademark before you start using it. There is a separate application for trademarks that are not used in commerce. Check with your lawyer to see if this is an option you should exercise.

5 // Double check those logos. 

If a designer is creating logos and materials pertaining to your trademark, make sure they warrant the originality of them in writing. If they use already used content as a base, you may have issues when you try to protect it with a Trademark registration. If they are “similarly confusing” to another Trademark in commerce in your market, then you will not be able to register it and/or worse, find yourself defending a possible infringement.

6 // Get it in writing.

 Get in the habit of having a contract with everyone you do business with, particularly designers. Better yet, get an attorney to draft contracts for you. An attorney will take the time to understand your goals in order to properly protect your rights. Also, stay away from contract templates online. A contract is only as good as its content, and if a contract doesn’t have the right language, you can lose the protection you were seeking in the first place. I know this is a lot to digest, so I created some easy to read e-books to explain some of the concepts highlighted in this article. Also, check out this downloadable guide. It’s free and gives you a broad overview of the trademark process. 

AUTHORS: SALMA BENKABBOU, ESQ. Salma is The Millennial Business Lawyer™ and lead legal strategist at The Benkabbou Law Firm, PLLC. She is licensed to practice law in North Carolina, New Jersey (since 2013) and in Florida (since 2014). She helps entrepreneurs with business formation, contracts, Trademarks, Copyrights, Trade Secrets and all ancillary legal matters that pertain to starting, running and scaling a business. Trademarks and Copyrights are federal matters so they do not vary from state to state so she helps clients with them nationwide. The information provided here is the copyright of The Benkabbou Law Firm, PLLC, so you cannot sell it, reproduce it or do anything with it without written consent from The Benkabbou Law Firm, PLLC. DISCLAIMER No Attorney-Client Relationship Created by Use of this website: Neither your receipt of information from this website, nor your use of this website to contact The Benkabbou Law Firm, PLLC or Salma Benkabbou, Esq. creates an attorney-client relationship between you and The Benkabbou Law Firm, PLLC. As a matter of policy, The Benkabbou Law Firm, PLLC does not accept a new client without first investigating for possible conflicts of interests and obtaining a signed engagement letter. (The Benkabbou Law Firm, PLLC may, for example, already represent another party involved in your matter.) Accordingly, you should not use this website to provide confidential information about a legal matter of yours to The Benkabbou Law Firm, PLLC.