Registered trademarks: do you need one?
For many years, we’ve been working with a wonderful trademark attorney, Amy Wright, who has advised us and and several of our clients on the ins and outs of getting a trademark. We sat down with Amy and asked her to share her knowledge of trademarks with our CU marketer friends.
Diz: Amy, why does a credit union need to trademark anything?
Amy: There are many reasons to register a trademark. For example, by registering a trademark, the credit union can receive exclusive nationwide rights in a mark. Registered marks are also less likely to be infringed upon because the act of registration provides official notice to the world that a trademark is already taken.
iDiz: Does this actually prevent other companies from copying a mark?
Amy: Generally, yes. Federal trademark registrations are public records, and the ownership of a registration is considered constructive notice of the trademark owner’s rights. Also, by registering a trademark, the owner obtains the future right to make the mark “incontestable.” Registering a trademark can also allow a credit union the right to recover up to triple damages and fees attorney in the event of a willful infringement.
iDiz: Does that mean I can use the ® symbol?
Amy: Absolutely. Once you’ve federally registered a mark, you can use the ® symbol.
iDiz: What’s the difference between the ® symbol and the “TM”symbol?
Amy: You can use the “TM” symbol until you get your federal registration; it is actually illegal to use ® until you have a federal registration registration. A credit union or anyone else could put “TM” on anything they want, but that doesn’t necessarily mean they have exclusive rights in the mark. . .
iDiz: So what exactly should a credit union consider registering?
Amy: Really anything you want to protect and prevent third parties, including other credit unions, from using. This can include words, slogans, logos, colors, and sounds. For example, Hershey, “Finger lickin’ good,” the Nike swoosh, the color red on the soles of Christian Louboutin shoes, and the NBC chime.
iDiz: Does it make more sense for a credit union to just get a state trademark registration instead of a federal one?
Amy: That’s definitely an option for many credit unions. A state registration costs far less than a federal one and many credit unions only have a local presence. They have no need for a federal registration. With a state registration, the rights would extend throughout the state, as opposed to throughout the entire country. Also, state registered marks may not use the ® symbol. . .
iDiz: How does a credit union start the process?
Amy: First we need to make sure there’s nothing out there already trademarked that’s similar to what you’d like to trademark; i.e., we need to conduct a trademark search. Trademark searches are optional and they are even something you can do yourself on Google or the USPTO’s search engine. We can also do the search. A simple “knock out” search costs about $300 and a full, comprehensive trademark search costs about $1,500. It’s typically best to have a full, comprehensive search performed, because the whole application process can take between 12 – 24 months and a credit union wouldn’t want to wait all that time only to find out there was already something out there that would prevent their mark from being registered.
iDiz: So this isn’t something that happens overnight?
Amy: No but it’s so worth it in the end. No matter what you’re looking to trademark, it will become an important part of your brand and identity. Over time, it will become something both your members and nonmembers recognize right away.
iDiz: So how much does it generally cost?
Amy: It’s about $700 – $800 to get a federal application on file, and unless there are objections lodged, there may not be much more in terms of costs to register it. Plus the costs for doing the initial search if you decide to do it that way.
iDiz: What other talents do you have besides being a lawyer?
Amy: I’m an excellent Pinocle player – I never lose. I love to roller skate and I’m an organization freak. Everything in the closets and cabinets of my house is in a (matching) container with a label. I’m pretty good with an axe too! I grew up in the wild, wild west, and when I was 10 I used one to cut the head off a turkey.
iDiz: All good skills to have.
Amy: I know, right?!
iDiz: But I’m glad there are no axes around.
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