*Please note that while Gerben Law Firm is not located in Wisconsin, it can assist businesses from Wisconsin in registering a federal trademark because it is a federal matter.
In 2008, Gerben Law Firm was founded by trademark attorney Josh Gerben to help business owners register and protect their trademarks. Since that time, Gerben Law Firm has worked with clients throughout the United States, including Madison. Our law firm provides professional attorney services to businesses of all sizes, including individuals. Whether you sell your baked goods at the Capitol Square Farmers Market or you own a manufacturing plant in Stoughton, Gerben Law Firm has attorneys available to assist you in protecting your business and intellectual property.
Federal Trademark Registration For Your Business
Top 5 Questions Madison Businesses Have About Obtaining a Trademark
- Why should I register a trademark?
- A trademark protects items that represent your company to your customers, including words, names, phrases, and symbols. A registered trademark distinguishes your brand from your competitors, and it will protect you from others using a similar mark. If you choose to do business without federally registering a trademark you could find it incredibly difficult to protect your brand in today’s marketplace.
- Do I need to work with a trademark attorney?
- Business owners sometimes choose to begin the trademark registration process on their own, and quickly find out that the process is much more complicated than they anticipated. Working with the experienced trademark attorneys from Gerben Law Firm ensures that the process to register your trademark will run smoothly from start to finish.
- When should I file my trademark application?
- Ideally, you should begin the trademark registration process as soon as possible. In fact, we suggest it should be one of the very first actions you take in starting or expanding your business. Before you decide on a name or begin designing your brand, you’ll want to complete a comprehensive trademark search. Waiting to complete a trademark search until after you’ve labeled your product, printed marketing, and hung your sign could be financially devastating if you find that you are in fact infringing on another business’s mark. If your trademark search reveals no likely competitors using a similar mark, you should file as soon as possible. The date you file your trademark application will become your priority date nationwide. This means that anyone that files a similar mark after you will not have the rights to use it.
- Is my trademark kept secret while the USPTO reviews it?
- All trademark applications are in the public record. Applications, along with communications to and from the United States Patent and Trademark Office, are posted to the USPTO website daily.
- What are International Classes?
- The USPTO has 47 groups of goods and services known as International Classes. Depending on which goods and services you offer, you may register for one class or several. If you are not sure about which classes to register for, contact an experienced attorney at Gerben Law Firm for assistance.
Common Misunderstandings about Filing Trademarks for Madison Businesses
- Trademarks, patents, and copyrights are essentially the same thing.
- The terms trademark, patent, and copyright are not interchangeable. Trademarks protect items that represent a brand, such as a business name, logo, or slogan. Patents, however, are filed to protect inventions, and copyrights protect works of authorships, such as song lyrics, novels, and works of art.
- The process to register a trademark is easy, so a “do-it-yourself” legal website will be just as effective as hiring an attorney.
- Filing for a trademark is often a complicated process, with complex legal decisions unique to your business. The scope of goods and services you provide, the availability of the trademark itself and ownership considerations all be considered. According to a study done by the University of North Carolina, working with an experienced trademark attorney will increase your chances of registering your trademark, which will likely save you time and money in the long run.
- I can register a competitor’s brands with the USPTO in an effort to stop my competitor from using them.
- Registering a trademark that you know does not belong to you is a fraud. Therefore, it is not possible to legitimately register a competitor’s trademark.. Consult a trademark attorney to learn your rights in filing for a federal trademark.
- I should register for in as many classes as possible and for as many goods as I can think of.
- Trademark applications should be limited to the goods and services that will be provided within the next three years. Filing a trademark in multiple classes could increase the chances that your application is denied. Work with a trademark attorney to determine which classes should be included in your application.
The Number of Trademarks Registered by Madison, WI Businesses (by Year)
How many trademarks have Madison businesses registered over the years? Gerben Law Firm collected the following data.
||# of Trademarks Registered
*data was gathered from the USPTO’s public database
Types of Trademark Services We Offer
Additional Information on Trademark Registration for Madison Businesses
New business owners understand the lengthy process to starting a successful business. From designing a logo to hiring employees, the investment of both time and money can be overwhelming. While registering a federal trademark should be one of the very first priorities in starting a business, some new business owners overlook this important step, an oversight that could cost them much more down the line.
Consider the scenario of Lakeside Cabinets (this example is not real and for explanation purposes only) A skilled carpenter opens shop in Madison, with the plan to become the leading kitchen and bathroom remodeler in the lakeside communities surrounding Madison. He’s aware of his two biggest competitors in the area, neither one with a similar business name or logo, so the business owner feels he’s free to brand his business as he chooses, assuming he’ll eventually register for a trademark. Therefore, he opens his business and calls it Lakeside Cabinets. A few months later, another Madison resident begins the process of opening his new business, Lakeside Kitchen and Bath.
Because the business names and services provided are nearly identical, the owner of Lakeside Kitchen and Bath is well within his rights to ask the other business to change its name based on a theory of common law trademarks. With that said, if Lakeside Cabinets had taken steps to federally register its trademark the company could have made its enforcement efforts much easier (perhaps being able to take down social media pages of Lakeside Kitchen and Bath, among other listings). Unfortunately, the owner of Lakeside Kitchen and Bath is unwilling to simply change the name of his business and now Lakeside Cabinets must go to court and spend potentially tens of thousands of dollars on attorneys fees to enforce its common law trademark. If the trademark had been federally registered it would have been easier to persuade the owner of Lakeside Kitchen and Bath to consider a name change, and, various enforcement steps short of expensive litigation could have been taken. This is why it is essential to begin the process of filing for a trademark before the business name, logo, and branding have been decided. At Gerben Law Firm, our experienced attorneys will conduct a comprehensive trademark search and secure the rights to your mark, so that you can feel confident moving forward with your business plan. Contact us today to start the process of protecting your business.