How to Protect Your Small Business From Trademark Infringement

As a small business owner, your brand is one of your most valuable assets.

A unique and recognizable trademark differentiates your products or services from competitors and helps build customer trust and loyalty.

However, without proper protection, your trademark could be vulnerable to misuse or infringement, harming your business's reputation and revenue.

In this guide, we'll walk you through the steps to secure your brand, including:

• Selecting a strong trademark,
• Understanding the types of trademarkable works,
• And ensuring its protection through proper use and federal trademark registration.

By the end, you'll know how to safeguard your business and what to do if your trademark rights are violated.

Firstly — selecting a strong trademark

Choosing a strong trademark is the first step in protecting your small business from infringement.

A trademark's strength depends on its distinctiveness, which is crucial for its ability to be legally protected and enforced.

There are four categories of trademark strength to consider: generic, descriptive, suggestive, and arbitrary/fanciful.

1. Generic trademarks: These are the weakest and offer no protection. They use common terms describing a type or product category, such as "Computer Store" for a business selling computers. Generic names can never function as trademarks because they don't uniquely identify the source of a product or service.
2. Descriptive trademarks: Descriptive marks provide information about a product or service's characteristics, qualities, or purpose. An example would be "Quick-Clean" for a dry-cleaning service. While stronger than generic marks, descriptive marks often face difficulties in gaining legal protection unless they have acquired distinctiveness through extensive use over time.
3. Suggestive trademarks: Suggestive trademarks hint at the nature or quality of a product or service without directly describing it. An example would be "Netflix" for an entertainment streaming service. These trademarks are inherently distinctive and easier to protect because they require consumers to use their imagination to understand the connection between the mark and the product.
4. Arbitrary and fanciful trademarks: These are the strongest types of trademarks. Arbitrary marks use common words in an unrelated context, like "Apple" for computers, while fanciful marks are entirely invented, such as "Kodak" or "Xerox." Because they're highly distinctive, these trademarks are the easiest to register and defend against infringement.

Choosing a strong trademark at the outset will ensure that your brand is not only memorable, but also easier to protect, saving you time and legal costs in the long run.

The various types of trademarkable works

Trademarks aren't limited to just business names or logos. They encompass a variety of elements that help distinguish your business and its offerings from others in the marketplace.

Understanding the types of trademarkable works will help you identify what parts of your brand can be legally protected.

Here's a look at the main categories eligible for trademark filings:

1. Word marks: This type of trademark consists of words, letters, or numbers. It can be your business name, a slogan, or tagline. For instance, "Nike" and "Just Do It" are word marks that help consumers identify the source of the product.
2. Design marks: Design marks include logos, symbols, or stylized elements that visually represent your business. They can range from a simple graphic to a complex design associated with your brand, such as McDonald's golden arches.
3. Composite marks: Composite marks combine word and design elements. An example would be the Starbucks logo, which includes both a word mark and a visual design. These marks provide comprehensive protection for both the name and the design.
4. Sound marks: A sound mark is a unique audio signature that customers associate with your brand. Think of the MGM lion's roar or the Intel chime. If your business has a distinct sound that sets it apart, it can be registered as a trademark.
5. Color marks: In certain cases, specific colors can serve as trademarks, such as Tiffany & Co.'s Robin Egg Blue or the red soles of Louboutin shoes. However, obtaining protection for color marks usually requires demonstrating that the color has become inherently tied to your brand through extensive use.
6. Motion marks: Motion marks protect moving logos or animated symbols. A famous example is the animated lighting sequence in the Pixar lamp logo. These are more complex to register but can be invaluable in distinguishing your brand.
7. Shape marks (trade dress): Trade dress refers to the visual appearance or packaging of a product, which includes its shape, layout, or even the décor of a business location. For example, the shape of a Coca-Cola bottle is a protected trademark. Shape marks help protect your product or service's overall image and feel.

By understanding the different types of trademarkable works, you can strategically decide what aspects of your brand to protect, ensuring comprehensive legal coverage and stronger brand recognition.

Want to learn more about trademarks? Then read our detailed guide “What Is a Trademark?.”

Trademarks — use them or lose them

Owning a registered trademark is just the beginning of protecting your brand. To maintain exclusive rights, you must actively use the trademark in commerce.

A failure to use your trademark could lead to a loss of rights, making it vulnerable to cancellation or infringement.

This concept is known as "use it or lose it," and it's crucial for small business owners to understand the implications.

Why use is important

Trademarks are designed to identify the source of goods or services and build a reputation in the marketplace.

If a trademark isn't used consistently and properly, it may lose its distinctiveness, making it difficult to enforce against infringers.

The law requires that trademarks be used continuously, demonstrating that they actively distinguish your business's offerings.

What constitutes proper use?

Proper use of a trademark means using it in a way that makes it clear to consumers that it represents your brand. Here's what it involves:

1. Commercial use: Your trademark must be used in connection with selling or advertising goods or services in a real, bona fide way. This means it cannot just be a placeholder or used sporadically.
2. Consistent display: Use your trademark consistently across products, packaging, websites, and marketing materials. Any deviation in design or presentation can weaken its protection.
3. Use as a trademark, not a description: Ensure that your trademark is not being used generically or descriptively. For example, using "Google" as a verb, such as "to google something," led to risks of genericide (when a trademark loses its status due to being used as a generic term).

Avoiding abandonment

Abandonment occurs if a trademark hasn't been used for three consecutive years with no intent to resume its use.

In such cases, the trademark can be considered legally "dead," opening the door for other businesses to claim the same or similar mark.

To prevent this, ensure your trademark is in active use and periodically review its usage to ensure compliance.

Monitor for misuse

Another way to lose your trademark is through improper use by others.

If third parties use your mark without permission and you don't take action, it may become diluted or even generic. Monitor your trademark's usage regularly and act swiftly to stop unauthorized use.

In short, once you have a registered trademark, maintain its integrity by:

• Using it correctly,
• Enforcing your rights,
• And keeping it active in the marketplace.

Doing so will preserve its value and ensure that it continues to protect your brand.

How to register your small business trademark

(Unsure if a small business trademark is worth it? Then read our guide “Is a Trademark Worth It for a Small Business?”)

Registering your trademark is crucial in securing your brand's identity and ensuring that you have exclusive rights to use it in connection with your products or services.

While using a trademark in commerce offers some level of "common law" protection, formal registration provides nationwide coverage and stronger legal rights.

Instead of navigating the registration process alone, Trademarkia can simplify the process for you.

Here's how you can register your small business's trademark through Trademarkia:

1. Conduct a trademark search

Before registering your trademark, conduct a comprehensive search to ensure that your mark is unique and not already in use by another business.

(You want to avoid accidental trademark infringement, after all!)

Through Trademarkia, you can conduct a free trademark checker.

This step is crucial to avoid legal disputes or rejection during the application process.

2. Choose the right trademark class

Trademarks are a form of intellectual property that are categorized into different classes based on the type of goods or services they represent.

Determining which class or classes your business falls into is essential, as this will dictate how your trademark is structured and protected.

And if you find it difficult to select the right classes:

Our attorneys can help guide you select the appropriate class to ensure full product and service coverage.

3. Prepare your application with Trademarkia's assistance

Now it's time for federal trademark protection.

Our platform simplifies the preparation process by guiding you step-by-step.

You'll need to provide essential details such as:

• Your business name and information.
• A clear image or specimen of your trademark.
• The trademark's intended use: Whether you're currently using the trademark in commerce or plan to use it in the future.

Our system helps avoid common pitfalls that can delay applications, ensuring that your submission is accurate and complete.

4. File your trademark application through Trademarkia

Trademarkia will file your trademark application with the United States Patent and Trademark Office (USPTO) on your behalf.

(You don't need to navigate the complex filing system alone.)

Simply select your package and upload the required documents, and Trademarkia will handle the trademark registration and submission process for you, including selecting the correct application form and paying the necessary filing fee.

5. Trademarkia handles USPTO office actions

After completing the filing of your federal trademark, the USPTO will review your application.

If the USPTO issues an Office Action—formal letters outlining any issues with your application—Trademarkia will notify you immediately.

Instead of responding on your own, Trademarkia's team of experienced trademark attorneys can help:

• Draft responses,
• Resolve conflicts,
• And communicate directly with the USPTO to ensure that your application proceeds smoothly.

6. Publication and opposition period

If your application passes the initial review, it'll be published in the Official Gazette for a 30-day opposition period. During this period, other parties can challenge your trademark if they believe it infringes on their rights.

Our team monitors this process and will alert you if any oppositions are filed.

With Trademarkia's support and expertise in trademark law, you'll be prepared to address any challenges effectively.

7. Receive your registration certificate

Once your trademark clears the opposition period and all issues are resolved, the USPTO will issue a registration certificate.

If you filed an Intent-to-Use application, Trademarkia will help you file a Statement of Use to show that your trademark is actively being used in commerce before final registration.

8. Maintain and renew your trademark

Trademarkia will also assist in maintaining and renewing your trademark.

You must file a Declaration of Use between the fifth and sixth year of registration to confirm that the trademark is still in use.

Additionally, Trademarkia will remind you when it's time to file renewal documents every ten years, helping you avoid lapses that could jeopardize your rights.

Using Trademarkia to file and manage your trademark ensures that every step is handled professionally, saving you time and reducing the risk of costly mistakes.

This allows you to focus on growing your business while knowing your brand is well-protected.

What happens if your trademark is infringed on?

If your trademark is infringed upon, the first step is to confirm the infringement by assessing whether the other party's mark is similar enough to cause consumer confusion.

Gather evidence like:

• Screenshots,
• Dates,
• And proof of your own trademark usage.

Next, send a cease-and-desist letter to formally request that they stop using your mark—often resolving the issue without further action.

If the infringer responds, consider negotiating a settlement, such as rebranding or compensation.

If they ignore your letter or refuse to cooperate, you may need to file a lawsuit to seek injunctions or damages.

Finally, monitor your trademark regularly to catch any future infringements early. Quick action will protect your brand and uphold its value.

Not sure how to get the process started? Our expert team will gladly assist with these problems, including if you're looking at a trademark infringement lawsuit.

Get in touch with a trademark attorney today

Navigating trademark protection can be complex, but you don't have to handle it alone.

Consulting with a trademark attorney can ensure your business's brand is registered correctly, enforced, and defended against infringement.

Whether you need help filing a trademark, responding to Office Actions, or addressing infringement, an experienced attorney can guide you through the process, minimize risks, and save valuable time and resources.

Protect your business's reputation and success—reach out to a trademark attorney today to secure your brand's future.