How to Protect Your Shopify Store with a Federal Trademark

We like to bring on outside experts to speak to the issues that modern retailers face on which we’re not as well-versed. This week we have a guest post from Andrea Sager, an IP attorney who serves eCommerce businesses.

Chances are you’ve heard about a trademark. You probably know that it provides brand protection once you have the registration. But what protection does it provide exactly?

Not to be confused with a copyright, a trademark provides the branding of your business with protection. The most common protections include your:

• Brand name
• Slogan
• And your logo

With the rise of online businesses, once you have a federal trademark, you can essentially shut down an infringing online business without filing a lawsuit. Granted, trademarks do cost you money upfront, but they can save you heaps of money in the long run.

What happens when you don’t get a federal trademark?

Let’s take a quick look at what can happen when you don’t protect your business with a federal trademark.

Sometime down the road, you notice a new business that has a similar brand name that’s pretty much selling the same products as you. What can you do? Well, you can try reaching out to the other business to let them know they’re infringing on your common law trademark.

You do have *some* rights with a common law trademark, but those rights vary widely, and you would have to actually sue the other business to have them comply with your request to change their name.

Best case scenario here, is the company abides by your request, and you can move on.

But what happens when they don’t comply? Even worse, what happens when they don’t comply, notice you haven’t filed for a trademark, and then they decide to file for the trademark?

Although the company that was conducting business first has the rights to the trademark, the trademark office registers trademarks according to who files first. Even if you file the day after the other company files their application and you were in business 10 years prior, you will have additional expenses in order to make sure your mark is approved over the newer company. Your options can cost in the thousands, and you will quickly learn that you would have saved a lot of money if you would have filed your application sooner.

What happens when you DO get a federal trademark?

Now that we have an idea of what can happen when you don’t file an application to register your trademark, what can happen when you do have your registration?

Let’s take the same situation as above: you notice a new business with a similar name and they don’t comply with your request even though you do have a registration. This time, you can reach out to your attorney to send a cease and desist letter. You can also go straight to the source: the platform hosting the business. Whether it’s a Shopify website or a business page on social media, the hosting platform will remove the page once you show them your registered trademark.

That’s right, if the business is exclusively online, you don’t even have to pay your attorney to send a cease and desist letter. (If the infringing company conducts business offline, you will want to consult your attorney to discuss the best way to approach the issue.)

The Trademarking Process

To give you an idea of the cost, one trademark search and application with me is $1,650, which includes the filing fee. This can be broken up into 3 or 6-monthly payments. Every attorney’s fees will vary, though, and make sure to, among other things, ask whether the filing fee is included in the price they quote you.

On top of the monetary investment, the trademark process can be very lengthy. The very minimum time for a mark to be registered is 6 months. However, the application process normally takes around 9 months or more.

That’s a fairly long time, but the process has quite a number of steps:

1. The Search (1 Week)

If you’re filing for a federal trademark, you absolutely should not enter the application process without running a search. And by search, I don’t mean your own Google and TESS database search. I am referring to an official trademark search run by your attorney. Depending on my current turnaround time, my searches take 2-7 business days. Once I give the okay from the search, then we file the application.

2. Application & Examination (3-4 months)

This step takes 3-4 months. This is when the US Patent and Trademark Office’s trademark attorney conducts its exam to determine whether the likelihood of confusion exists with another registered mark. There are a number of additional issues the examining attorney looks for:

• Whether corrections need to be made with the application itself.
• And whether the trademark is primarily geographic, descriptive, or surname, etc.

If the examining attorney finds no issues with your application, you will be approved for publication (step 4).

If the examining attorney finds an issue, for whatever reason, you will be issued a Non-Final Office Action to which you must respond (step 3).

3. The Office Action (Up to 6 months)

You have 6 months to respond to the office action, but the longer you wait, the longer your application will take. It is best to respond ASAP!

When you submit the response, it will take up to a few weeks for the examining attorney to review and determine whether you should now be published (step 4), or whether you will be re-issued a Final Office Action (repeat step 3).

4. Publication (30 Days)

Once you’re approved for publication, your mark will be published for opposition for 30 days. This is to give the world notice that your mark will become official unless an owner of a different mark believes your mark will cause damage to its brand. This is rare, but if another mark owner does believe yours should not be registered, they will file an opposition proceeding. The opposition proceeding is essentially a streamlined trial to determine whether valid grounds do exist and your mark shouldn’t be registered.

If no one files an opposition, or if you prevail in the proceeding, your mark will be officially registered!

If a mark owner does file an opposition and prevails, your mark will not be registered.

5. Registration (The Finish Line)

Congratulations! You’ve made it to registration. Now it’s up to you to maintain your mark – prevent infringers and maintain registration renewals!

Ready to get a trademark?

Although the trademark process can be pricey and lengthy, the protections it can provide you more than make up for the time and cost. New businesses are popping up every 5 minutes and it’s only a matter of time before one of those businesses infringes on your brand name. You can either actively protect your brand, or you can stand by and watch others build their brand off your hard work and goodwill. What will you choose?

Want Andrea to help you file for a trademark? You can find her here.