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Trademark Registration for E-Commerce Merchants

By John DiGiacomo

John Di Giacomo: Hey everyone, my name is John Di Giacomo. I am a partner with Revision Legal and Revision Legal is a law firm that has expertise in eCommerce and internet law. I wanted to talk a little bit today about why trademark registration is important and what are the benefits of trademark registration for eCommerce store owners.

We get this question quite a bit so let’s kind of start at the beginning and talk about, what is a trademark? A trademark is any kind of design, word, color, even a smell that indicates the origin or source of your goods or services.

What does that mean? Well, when we talk about trademarks, we really are talking about lowering cognitive search costs. That basically means that the next time a consumer goes to reach for your good or reach for your service, they’re able to recall that quickly and without a lot of effort. That makes the brand connection and it makes it easier for them to find your product and buy it again. That’s really the benefit of trademarks and why we see trademark protection.

Now, why is that type of protection important for an eCommerce store owner? Well, number one, a trademark is a very valuable asset that, when you go to sell your business, is one of the first things that other purchasers will look for as a primary business asset. It’s a very valuable piece of intellectual property protection because it protects the Goodwill that you’ve built into your brand over the course of your business.

Secondly, now, with a lot of eCommerce retailers selling on Amazon, trademark registration will allow you access to Brand Registry 2.0, which will allow you to stop counterfeiting and to allow you to cease third parties from taking advantage of your listings or otherwise harming your brand on Amazon as a platform. It gives you access.

And third, it allows you to stop other nefarious actions. Things like keyword bidding. People using your trademark in ad text. People attempting to hijack your domain name or siphon traffic from your eCommerce store for the purposes of selling their own product.

Another great benefit is that it’s defensive. If you have a registered trademark, you know that no one else is going to come out of the woodwork and send you a cease and desist letter or potentially file suit against you. It gives you that peace of mind, as a business owner, that you can continue with your business without a whole lot of additional unnecessary risk.

What is a trademark registration like? What is the process? Well, if you talk to an attorney, the first step is going to be a clearance search. That typically is a search of the US Patent and Trademark Office database and a search of third party databases, sometimes international or common law databases, that identify whether or not there are other trademarks that conflict with your mark.

When we do this, we look for things that are likely to cause consumer confusion. A great example is Delta Faucets and Delta Airlines. Those are two of the same mark used in different contexts where there is no likelihood of consumer confusion because the products are not related. So we’re looking for those similar applications or registrations that are used in association with the same or similar goods or services.

Once that clearance search is done, we draft an application, we provide it to you for your review, you sign off on it, and then we file it. The process takes a while.

Once the application is filed, it goes to the US Patent and Trademark Office and an examining attorney, which is an attorney on the other side, is assigned to your trademark application. That examining attorney then reviews the application to determine whether or not it meets procedural requirements and whether or not the substance of the application is correct. If it isn’t, the examining attorney will issue what’s called an office action. An office action is basically a brief that says you can’t get registration and it’s for some reason. When that happens, it’s the attorney’s duty to come up with arguments and respond to the refusal to register your trademark by submitting a response to that office action. If you get through, there’s a publication period. The publication period lasts 30 days and during that 30 day period third parties can oppose your trademark registration if they believe that it is likely to cause confusion with their existing use.

Back in the day when lawyers would use a lot of paper, the big trademark gazette would be sent around to attorneys around the country, they would flip through it, they would look for conflicting marks, or, excuse me, marks that conflict with their existing clients marks, and then they would send demand letters asking the applicants to cease their uses. Now it’s all done electronically. We can monitor these types of filings electronically and we can identify when somebody is attempting to register a mark that is similar to yours.

Ultimately, if your mark is not opposed, you’ll get registration in approximately 12 weeks from the publication date, or from the end of the opposition period. You’ll get a nice little registration certificate in the mail. But that’s not the end of it. After that, you have a number of duties, one of which is to renew your trademark, one, to enforce it, and also to, if you would like, to file a affidavit of incontestability claiming that your mark is the strongest possible mark that it can be between the fifth and sixth years of use.

There’s a lot of followup work that goes into a trademark registration that is important to keep a handle on, and that’s why attorneys often manage their dockets, their trademark dockets, with two calendars. That way, if one date is missed, there’s a backup calendar so that you don’t miss those important deadlines because trademarks can be the one of the most valuable assets in your business.

I hope this was valuable to you. If it was, please let us know. If there’s any other questions that you would like answered, again, please let us know.

Again, my name is John Di Giacomo. I’m a partner with Revision Legal. And thank you for watching.

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