When should I trademark my photography business name?
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Trademarks are source identifiers for goods or services.
What does that mean?
It means that when you see a trademark, you should think of it coming from only one source/person/group/company.
For instance, when you see or hear the trademarked term “iPhone”, you know it’s a product that comes from Apple, rather than from Microsoft or Google. Sometimes people will also trademark their name. For instance, Frank Sinatra trademarked his name under the classification of “Entertainment Services – Namely, Presentation of Musical Performances Rendered by a Singer”.
Use your mark!
The good news is that you obtain common law trademark rights by simply using a mark as a trademark! (Technically you’d probably be using it as a service mark because you are supplying services and not goods, but for the sake of this article we will use the terms trademark and service mark interchangeably.) The rights last as long as you are using the mark. “Use” is use in commerce, versus just wanting or intending to use the mark. If you want additional rights and protections (like attorney’s fees if you have to sue someone for infringement) you can register your trademark at either the state or federal level. This article will hopefully give you some things to think about regarding whether to apply for a registered trademark of your business name.
Your business name is likely either a variation of your name or it is not. Let’s explore those two options:
Should I register?
Whether to apply for a trademark registration here is personal preference. If you want the additional rights protections a registration will give you and you can afford it (more on that below), then there’s nothing bad about getting a trademark. If you have a more common name just know that someone may have already registered a trademark for that which would preclude you from doing so! However, you probably want to have used the mark for at least 5 years or you might get a refusal if you’re just using your last name in the mark (more on that in the high-level checklist post later in this series).
Your business name is something else (e.g., Silly Smiles, The Sacramento Shutterbug, or Glimpse Photography)
There is probably a stronger case for wanting to register a trademark in this instance. Obviously you want to make sure nobody else is using the mark and determine whether the mark is eligible to be trademarked (more on that in a later post as well). Since you are putting in the extra effort of using something other than your name, you want to make sure nobody else is going to use it either!
So what’s this going to cost me?
Another (big) point to think about is the cost. A state trademark registration can be fairly inexpensive ($70 to register and $30 for renewal in California). A federal trademark registration is more expensive ($225-275 to register and $300-400 to renew at different stages in the life of the mark). You can file the application yourself or you can hire an attorney to do so at an additional cost. However, an attorney may save you money in the long run because they can also:
- Let you know about the strength or weaknesses of your mark
- Easily complete the online application and registration process, leaving you free to run your business and not figure out how to do it yourself
- Maintain the trademark and alert you if they find any issues
- Help with possible infringement matters
Many trademark attorneys will quote a flat fee (say $750 or $1000) for a single classification trademark application, which is suitable for most people’s needs. Other attorneys will charge by the hour. If you use an attorney make sure they’ve done it before! It’s somewhat of a boutique area of law and you don’t want them to use your registration as a guinea pig. Also, there will likely be additional attorney fees after registration if you want them to maintain your mark for you, file renewals, etc.
I have this great idea…
As I stated earlier, your trademark rights exist simply because of your use of the mark. But what if you had a great idea for a name/logo and don’t want anyone else to use it? There is an option for that!
When you file your federal trademark application (sorry, this option is not available for state trademarks) you can file it under “intent to use” (aka “ITU” or “1(b)”), which means you are intending to use the mark in the future but haven’t starting using it yet. The process for an ITU starts out the same but at a certain point the PTO issues a Notice of Allowance which then requires you to submit a Statement of Use (“SOU”), showing that you have actually started to use the mark in commerce.
You can file up to six 6-month extensions, so potentially you have 3 years to actually start using the mark. Each extension costs $150 and the SOU itself costs $100. So it ends up costing a little extra if you file the application as an ITU, but if you absolutely must have a certain name or logo this is definitely an option you can use!
You get common law rights in the mark simply by using it, no registration required! Think about the following when determining when you should think about registering a trademark for your business name:
- If you’re using your own name in your business name registering your trademark is personal preference. If you have the money and want to do so, go ahead! You do get additional rights when you register.
- If your business name does not include your own name, there is a much stronger case to be made for registering the mark.
- Remember that all registered trademarks have fees to maintain the registration, so keep that in mind for your future budgets.
- You can file an ITU application if you haven’t started using the mark yet but intend to within 3 years, but there are additional fees involved if you choose this option.