Protecting Your IT Company’s Brand

By Josh Gerben, Esq.

In a world that has come to rely heavily upon teleworking, virtual meetings, and efficiency for remote and distanced productivity, the importance of remote work tools like Zoom, Microsoft Teams, Slack, Google Hangouts is constantly evolving.

There is now an unprecedented number of businesses adapting to employees working from home in varying capacities; the new challenges and necessary adjustments brought on by this shift have created an ever-increasing demand for the services that remote work apps and services offer.

Now, more than ever, it is essential for these sought-after businesses to ensure that they are investing in their intellectual property portfolios and seeking trademark registrations for their valuable service offerings.

As businesses will turn to online searching to find the most well-respected companies to help their employees work remotely, ensuring the name and brand of your IT company is protected is important.  The best way to protect the brand of your IT company is to consider a strong federal trademark registration strategy.

Why are trademarks so important for IT companies?

Aside from being investments that can increase the book value your company, trademarks are also highly effective tools for safeguarding your business. A federal trademark registration offers protection through providing the presumption of nationwide validity, enabling effective policing of the marketplace, and deterring others from utilizing branding similar to yours

. Once a federal trademark registration is obtained, that mark is enforceable throughout the United States–this attribute is especially significant to businesses providing remote work technology, as their products are designed to be used virtually, and the nature of the users are not bound by state lines or regional boundaries in the same ways that other businesses can be.

For services that are inherently virtual, such as e-learning platforms, software distribution, and cloud security systems, this nationwide assurance is not just a benefit–it is a necessity.

Additionally, federal trademark registrations allow effective policing of the online marketplace, the primary home of businesses with virtual platforms, such as those that offer remote services or streaming options. Even for brick and mortar businesses, websites and an online presence are an essential part of a well-rounded marketing repertoire but with remote work tools – it’s critical.

Making sure that your business name and logo are registered trademarks will help to prevent any third parties operating in your field from using branding too similar to yours. Preventing consumer confusion, especially for a software business that may not be meeting customers face to face on a regular basis, is imperative to success.

A registered trademark will also serve as deterrence for others seeking a name for their product or business–many business owners understand the gravity held by intellectual property and will pointedly avoid crossing the boundaries set by a trademark registration. Because of this, both businesses are able to avoid costly and time-consuming litigation before it even has a chance to occur.

To learn more about the benefits of a federally registered trademark in detail, click here.

How is a trademark registered?

The federal trademark application process takes approximately fifteen months, though this timeline can be extended by potential refusals, oppositions, or government-issued Office actions. While there is no way to expedite this procedure, hiring an experienced trademark attorney and performing a clearance search prior to filing can facilitate a smooth application process.

Trademark attorneys are statistically proven to raise the chances of an application’s approval due to their understanding of the technicalities and nuances that are characteristic of a trademark application; furthermore, attorneys are able to perform a clearance search that can reveal any previously existing trademarks that may overlap with yours and even possibly prevent your trademark’s registration.

Once the application details are finalized and it has been made certain that there are no trademarks already registered that may bar your trademark’s approval, the application can be submitted.

After about eight months, the application will reach the desk of an examining attorney at the USPTO for review. If no Office action is issued, the trademark will be published for opposition, which begins a thirty-day period in which other parties are able to challenge the application should they believe it may harm their own mark or business.

After the publication period has concluded, the application goes back to the examining attorney for a final review. Depending on the original filing basis of the application, the owner may need to prove use of the trademark at this time.

For companies offering IT services, this usage requirement may be fulfilled by their website, software platform, or other virtual designation that demonstrates consumer activity. Once the USPTO has evidence of the trademark’s use in commerce, the registration certificate is issued and the trademark is successfully registered. Learn more about trademark registration.

How much does your IT business need to budget for a trademark registration?

The costs associated with a trademark registration will depend upon the legal services you hire to assist with the application. Gerben IP operates under a straightforward, flat fee basis for our search and registration package; rather than using hourly billing, this transparent bundle includes a common law, state, and federal clearance search, attorney consultation time, the drafting and filing of the trademark application, response to non-substantive Office actions, and issuing of the registration certificate for $1,500.

At the time the application is filed, there are government fees that are submitted alongside it: the USPTO requires the applicant to pay $350 for each class designated within the application. Each business is unique, so the exact government fees applicable to each trademark application may vary depending on the specific services that are offered.

The classes of goods and services that are listed on the application are discussed in detail with the attorney prior to submission, allowing the applicant a clear idea of what the government fees will look like before they are due. Read our detailed breakdown of full costs associated with registering a trademark.

Ultimately, the demand for remote work technology has grown in an explosive, boundless manner and has not yet shown signs of slowing down. As companies work to meet the increasing demands of online productivity–whether that be students utilizing online learning platforms, employees teleworking, or entertainment streaming services growing exponentially–it has become more significant than ever for businesses to ensure that their name and branding are safeguarded.

Ensuring that protection through a trademark registration allows your business to focus on providing valuable services with peace of mind, regardless of what lies ahead.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.