How many trademarks must be registered when launching a business? This is not the first question new entrepreneurs tend to ask.
Instead, newer solopreneurs and start-ups think in singular terms. They want to “protect my logo” or “register my business name” or to accomplish some other singular goal.
What are they missing?
They are missing some underlying basic information about US trademark law. In particular, the question of what exactly is “protected” with a single trademark registration certificate issued by the US Patent and Trademark Office (USPTO).
This Article will discuss the underlying legal and practical considerations of this question.
How many trademarks do you need to register for your new business?
It depends upon your brand—and your particular marketing.
The Purpose of US Trademark Law
First, in answering the question of how many trademarks you need to register for a new business, it is vital to understand the purpose of US trademark law.
Whereas copyright and patent registration are process geared toward protecting your right to exclusively earn income from your creative, engineering, and scientific output, trademark registration serves a different legal purpose.
The primary function of US trademark registration is to ensure that US consumers know what they are buying and from whom.
The US trademark registration process exists to offer the guarantee that, when you buy a can of Coke from any Metro Detroit convenience store, you are buying what you think you’re buying. You are buying a product bottled (or canned) by the Coca Cola Bottling Company of Atlanta, Georgia and not buy some guy in his garage in Livonia, Michigan.
The “®” registered trademark symbol on the Coke can, alongside that so-familiar cursive Coca Cola script, is your guarantee of the source of that product.
Only the Coca Cola Company can use that symbol because it is the owner of that registered trademark. Your unemployed Uncle in his Livonia garage cannot do so, legally. (If he tries, Coca Cola will take action for trademark infringement.)
Thus, US trademark law essentially exists as a consumer protection measure.
Trademark Registration and Use in Commerce
That being so, a trademark may only be registered if it is being used in interstate commerce in association with the offer of a product or service to consumers.
This is true whether you want to register one or many trademarks.
In contrast, a copyright for a novel or a song or a painting can be registered with the US Copyright Office regardless of whether you sell it or stick in your attic forever. Not so with trademark registration.
If a trademark is not used in commerce, it is not a “trade” mark, right? It’s just a … mark.
In order for the system to function as a consumer protection guarantee, consumers must be involved. Further, in order for the Federal government to allow you the exclusive use of your many trademarks, you must be using them in commerce across Michigan’s or another state’s border.
The Commerce Clause of the US Constitution only gives the Federal government jurisdiction over a commercial transaction when it cross a state line. Otherwise, it is commercial activity regulated by Michigan or whatever state in occurs within.
If you don’t use a trademark in interstate commerce, you cannot register it with the USPTO. Or you lose it.
So How Many Trademarks Can—or Should—I Register?
That all being the case, you can register any “mark” that you are using to indicate to your customers that you are the source of your product or service.
A trademark is, in other words, a word, phrase, graphic design, color, smell, package shape, or even sound that is unique enough to identify your business as the course of your product or service.
Sound and smell and other “non-traditional” marks are rare, though they do exist on the Federal register. Our friends at Coca Cola, for example, have registered as a trademark the distinctly curved shape of their pop bottles.
Generally, a new business is seeking to build—and protect—the brand by which consumers will recognize the business. And by which the business will garner fair-market value. (The value of any business is its brand, and the customer “good will” it eventually carries with it.)
This, at first, will not amount to a need to register too many trademarks for your business.
But it may mean more than 1 single trademark.
What a Trademark Registration Protects
However, the key point in this discussion of many trademarks need to be registered is that each registration that you obtain will protect only that 1 mark depicted in the trademark registration certificate.
Thus, a logo design that includes your business name will only protect that name when it appears in that exact design.
If a third party is infringing upon your business name but only the name and not as an element of your logo, it is not actionable infringement. You will not be able to file suit for infringement against this bad actor in US Federal Court.
You need to have registered the name alone as a trademark to sue for infringement in such a case. The logo alone won’t do it.
Each free-standing element of your brand should be separately registered as an individual trademark, in other words.
What Sorts of Trademarks Should Be Registered
As noted, a trademark is a “source indicator.” This is what is meant by “element” in the paragraph above.
What sort of marks serve in this capacity for your business?
1. Company or Business Names
The name of your Michigan LLC or Corporation may also be your “front-facing” (customer-recognized) business name. If so, you will certainly want to register this name as a US trademark, first and foremost.
However, it is not necessary that your LLC or legal entity name be registered as a trademark. You will want to register as a trademark, again, the name that you use in trade. That is, what your customers recognize.
The legal name of your LLC, for example, as filed with the State of Michigan Corporations Division, may be just a series of numbers or alpha-characters. It only has to be distinct from any other entity formed in Michigan (to use our home state as an example) to be a legal entity name.
A well-known example is Google. We know this company as, yes, “Google,” but it’s parent company is “Alphabet, Inc.” The term “Google” is the company’s trade name.
Many larger corporations create holding companies in which to “house” their intellectual properties. Marvel Entertainment, in further example, created an entity called Marvel Characters, Inc. to hold its intellectual properties (such as trademarks!). But this is not the trade name by which that company is known.
Generally, however, for the new Metro Detroit or other small start-up, the company name will also be the trade name.
A stand-alone “word mark” trademark registration application protecting the name itself (no matter how it appears in what font or color or design configuration) should be the first of potentially many trademarks registered.
2. Product Names
Depending upon what your business sells, you may also have unique, colorful, distinctive product names that you will want to register as trademarks.
This will especially be true for craft brewers and game publishers and a host of other business types that release new products into the market on a regular basis.
At least for those products that you expect to stand the test of time (bearing in mind that it is taking well over a year as of this writing to register a trademark), you will want those valuable brand names protected.
3. Slogans and Tag-Lines
That catchy slogan can also be registered as a US trademark. Bear in mind, here the need for the slogan or tag-line to be distinctive. It must identify your business as a source of your particular product.
Thus, a generic or over-used slogan such as “We’re #1!” is a probably not registrable for you. But discuss with an experienced Michigan trademark attorney.
4. Logos
A logo or design signifier will be, along with your business name and product name, one of the first elements of your brand that you will want to register as a trademark.
If you are registering many trademarks, this should be #2 on the list, in fact.
At least, this will be true once you have really settled on a unique and distinctive logo. Did you pay somebody $15 to create one for you from some online freelancing website such as Fiverr? You’d better be sure that designer hasn’t re-hashed the same logo 100 times before selling it to you.
And don’t forget about copyright considerations. (See below.)
You may, eventually register many trademark for multiple iterations of your logo, also.
The first one that you register as a trademark should be a black-and-white version so that you are not registering your logo as a trademark in only 1 color scheme. After all, not only do color schemes changes at the whim of business owners and marketing departments but a savvy infringer will simply copy your logo in different colors if that’s all you’ve registered.
A black-and-white design is protected no matter what colors are used in an infringing knock-off.
You can register a second logo design in color later, or at the same time.
5. Product Design and Packaging
You can also register the art and look of your product as a trademark.
The question of distinctiveness will be key here, as well as the evidence you may be able to produce of consumer recognition of the packaging design as a source identifier.
In terms of artwork and labeling, this will be easier to demonstrate (when pressed) to the USPTO than, say, the Coke bottle shape mentioned above.
Nevertheless, if you are not just slapping your product name in Arial font on a white label, you may consider a separate trademark registration for product design or packaging.
Don’t Forget About Copyright Registration, Either
Remember, again, that trademark registration is a different form of intellectual property protection than copyright registration.
A copyright is a registration not with the USPTO but with the US Copyright Office. Copyright registration is appropriate for any creative or original work committed to a tangible form. (That means that you have to actually write your novel, not just think about it.)
Logos, product label artwork, and other trademarks may also be sufficiently original to benefit from copyright registration.
Copyright registration does not have any “use in commerce” requirement. You own the copyright for a fixed term simply by virtue of creating the work. In fact, under US law, a work’s creator owns the copyright automatically. This is true regardless whether you file a Copyright registration application or not.
This is what it is important to secure a “work for hire” agreement with the graphic designers you commission to create your logos for you. If they do not create the logo pursuant to a “work for hire” agreement, that designers owns the copyright.
Not you. Regardless of the $15 you paid through Fiverr.
How Many Trademarks Do I Need to Register? Ask Your Michigan Trademark Attorney
The bottom line is that the number of trademarks you need to register for a new or existing business will vary depending upon your branding, your needs, and, yes, your budget.
Consulting an experienced Michigan trademark attorney is the most effective way to craft a brand protection strategy that makes sense for your enterprise.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios in all industries and in all states with trademark registration, trademark renewal, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration, Letter of Protest, or Opposition success.