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To trademark, or not to trademark
- that is the question

Why should you do a trademark registration?

A registered trademark is basically a cheap insurance against conflicts - trademark infringement. There are two types of conflicts you want to stay out of:

Conflict type 1 - Copycats steal your name.

  • Without a trademark registration you will have a hard time fighting off the copycats. Having competition is diffcult enough, but when they start stealing your customers by using a similar name, you have a damaging sitiuation.
  • Even if it is unusual, you can build a strong trademark without doing a registration. If you have built recognition for your brand name in a market, you have actually established a trademark without registering it. But the hard thing is proving it, and being prepared to do it in court. A registration will from day one give you proof that you were first.

Conflict type 2 - You are the copycat, most often without knowing it.

  • You don’t want to get a letter from lawyer saying you will have to change name and pay for damages because you are too similar to an already registered trademark. Trademark search followed by a trademark registration is the best way to avoid this kind of trademark infringement.

For most businesses with any ambition, a trademark registration is a cheap way to stay out of conflicts. Put another way: You are securing the value you are creating in your business.

When can you skip a trademark registration?

You may save the trademark registration fee, if you agree to any of the following two statements:

A. It really doesn't matter that somebody starts using the same or a similar name.

  • This is the often the case when you plan to use a very generic word or phrase as your business name/domain name - like Fund.com or CowboyHatsStore.com. The name is impossible to trademark and no one can claim that it is confusingly similar to their registered trademark.
  • A good generic domain name can help in bringing in a lot of customers. But the risk that is often neglected here is that a competitor starts doing business with a very similar name/domain name, "stealing" or deceiving your customers. Examples:
  • - Fund.com may loose some customers to Funds.com - Here both parties are probably well aware of the risks.
  • - CowboyHatsStore.com will have to live close to CowboyHats.com in the web search results.
  • - AutoRepair.com taking customers from AutoRepairs.com - This kind of situation can of course be very damaging.

B. It really doesn't matter that you might have to change your name in the future.

  • Very few businesses would say that they are willing to take this risk. But the fact is that many businesses do, often without being aware of it. Sure, most of them are lucky and don’t end up in conflict. But many thousands of them get that letter that will force them to change name - which is a time and money consuming nightmare.

So, even if you’re going to skip a trademark registration, you should still do a trademark search and make sure there are no confusingly similar trademarks out there, in your markets, doing something similar.

Benoit Fallenius Founder and CEO

In this blog I will mostly write about two subjects:

1. Trademarks, domain names, naming and branding - Four separate areas that often are not that separate.

2. Markify news - Features, markets, pricing, challenges etc.

Feedback and questions are always welcome. Email me at benoit@markify.com.