What You Need to Know About Ecommerce Trademarks

What You Need to Know About Ecommerce Trademarks

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Do you need a trademark for your ecommerce business? Protecting your online reputation is an important part of building your business and earning your customers' trust. In the U.S. it's easy to start using a trademark (for products) or servicemark (for services). In fact, you can do it in just three steps or less.

The trademarking process starts with (1) determining whether or not your brand or logo is eligible, (2) deciding what level of protection makes sense for your business, and (3) possibly registering the trademark with the U.S. Patent and Trademark Office (USPTO). First, lets go over the basics of trademarking in the United States:

What is a Trademark?

According to the U.S. patent and trademark department: “A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.”

Similarly, the site defines a service mark as “any word, name, symbol, design, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.”

Ecommerce merchants may think of trademarks — especially registered trademarks — as a way of protecting brand names, taglines, slogans, or logos

Unregistered Vs. Registered Trademarks

There are essentially two categories or types of trademarks honored in the United States — registered and unregistered.

Unregistered Trademark: Can be used by any business, assuming it is eligible to be a trademark. To identify an unregistered trademark, simply place the trademark symbol (™) after or on the brand name, advertising slogan, or graphic design. Seriously, that's all you have to do. 

Displaying the unregistered trademark with the associated symbol on a website, in emails, on invoices, and on packing slips constitutes use. That is all that is required for unregistered trademarks in the U.S.

In the event of a dispute over a trademark, the company that first used the trademark will win in most circumstances. 

Registered Trademark: Is recognized on the U.S. Principal Register and can have a few advantages over an unregistered mark. For example, a registered trademark provides a legal presumption of ownership, which can be a huge help in the event of a trademark dispute. The registered mark makes it easier to file suite against copycats. And registering a mark in the U.S. can help if you want to extend the trademark to other nations. Registered U.S. trademarks use the registered symbol (®).

Do You Need a Trademark?

Most small businesses should at least treat the company name, website name, and any key marketing slogans as unregistered trademarks, adding the trademark symbol (™) next to them and naming them as trademarks in the site footer or about page.

The real question is do you need a registered trademark. For most small ecommerce merchants the answer is probably not. Adding the trademark symbol (™) as described above should provide adequate protection.

There are several very good reasons, however, for registering a trademark:

·    You have a niche business that might be copied.

·    Your business is growing rapidly and may need more trademark protection.

·    You are seeking investors.

·    You are applying for a business loan.

·    You want to sell your business.

·    You are working with an advertising agency to produce promotions.

In all of these cases, having a registered trademark could help. Take as an example the case of seeking investors: a registered trademark is generally considered to have a monetary value, while an unregistered one might not.

How to get a Trademark

How to get a Trademark

The process of trademarking your business name or logo, should take about ten minutes or less for an unregistered trademark or about an hour for a registered trademark. Both types of marks share the first two steps in common.

Step 1: Be Sure You Can Use the Trademark

Before using a brand name or slogan, it's important to learn whether or not that name is eligible for trademarking in United States. The United States Patent and Trademark Office (USPTO) doesn't allow trademarks that are descriptive, generic, or likely to cause confusion.

As an example, the USPTO might reject an attempt to use “Appl” or “App-L” as a trademark for a company selling electronics because the name could be confused with Apple. 

Similarly, the USPTO might reject a brand name like “Online Store” or “Hat Store” since these are the generic names for the category or type of business.

Visit the USPTO Trademark Electronic Search System (TESS) to help identify whether or not you can trademark your property. Also, it's a good idea to use Google, Bing, or another search engine to look for other unregistered trademarks similar to yours.

Step 2: Adding an Unregistered Trademark

If your trademark is eligible and there are no similar trademarks already in use in your industry, you can start using it. In fact, the first step in protecting a trademark in the United States is actively using it.

Start adding the trademark symbol (™) immediately on your ecommerce store and website. This is often done in the footer and on documents that you send or email to customers. Notice at the bottom of this blog we have a trademark on one of our slogans: "A shop in minutes, a business for life."

Step 2: Adding an Unregistered Trademark 

If you believe that you need the additional protection that registering a trademark can provide you'll want to move on to step three. Otherwise, you're done. You've successfully begun protecting your brand, slogan, or logo in the United States. 

Step 3: Adding a Registered Trademark

You can register your trademark via the online application called the Trademark Electronic Application System (TEAS).

TEAS includes several forms, beginning with the initial application. You'll need to know what “class” your business or trademark is, based on the more than 1,400 USPTO accepted classes. As an example, many online retail businesses are class 035. The USPTO has a class description search tool to help.

You'll also need to know basic information about your business, including its legal structure, and your trademark. And in the case of logos or designs, you will need examples that can be uploaded.

TEAS provides a PDF preview of its online form. This form cannot be used to actually submit the registration application, but it is very helpful for preparing before you start the electronic application process.

The TEAS processing fee ranges from $275 to $325. You should also note that it can take the USPTO six months or longer to complete the registration process, so be patient.

If you would like to learn more about Trademarks in other countries, please let me know which country in the comments. 

24 comments

  • Denise
    Denise
    March 13 2013, 11:41AM

    Handy. I would like to see something like this for the UK please.

  • uguard.me
    uguard.me
    March 13 2013, 12:00PM

    uguard.me is a trademark from the very beginning. It’s very imporant if you want to build brand awareness.

    uguard.me™

  • NestBedding.com
    NestBedding.com
    March 13 2013, 12:06PM

    Don’t be stupid and don’t be cheap; value your efforts and creativity and spend the money to protect your brand.

  • Richard
    Richard
    March 13 2013, 12:11PM

    Great post Shopify, not enough people protect their brand like this. Its so easy and yet nobody does it. I would like to see a similar post but on copyright. Keep up the good work.

  • DigiParent
    DigiParent
    March 13 2013, 01:15PM

    What would be the process of trademarking a name and logo in Canada?

  • @Shopify Mark Hayes
    Mark Hayes
    March 13 2013, 01:36PM

    Hey everyone, thanks for the great feedback. I plan on researching and writing about trademarking in the UK and Canada as well. They’re pretty juicy topics with a lot of legal issues to look into, so it’ll take me a couple months to fit into the Shopify blog schedule.

    Thanks so much for reading and commenting!

    -Mark

  • Bethany
    Bethany
    March 14 2013, 12:52AM

    We recently just completed our State Trademark, as well as our Federal Trademark.

    It is not exactly as quick and easy as the article states… Yes, it is roughly $300 for a trademark, but that is PER CLASS. We had to file in a dozen different classes to get adequate trademark protection. Also, if you don’t want to be immediately turned down by the USPTO and have to re-file and re-pay, you really need to hire a Trademark attorney. It made all the difference in the world in our filing and trademark success. However, again… not cheap. Depending on the size of your business, and the breadth of your products, you could spend anywhere between $1k-20k to successfully acquire a federally registered trademark.

    But yes, it is worth it.

  • JDunn
    JDunn
    March 17 2013, 06:28AM

    Great post as ever, Mark.

    Something for the UK and EU would be appreciated, too.

    The EU is particularly tricky, as I can have a registered trademark in the UK but someone can copy me in France. Or I can register for several different territories. Alternatively I can get an EU-wide registered trademark, but this can be quite expensive and depends on whether there is no one with your company name in your class, in any foreign territories in the EU.

    Bethany raised a valid point too, which is about classes of registration issue (our current business technically falls in four classes). As it would be incredibly expensive for us to secure these four classes throughout the EU, I’m thinking of registering for our primary one in the beginning, in the hopes it will act as a deterrent to would-be copycats.

    My old company ran up against some problems with only having an unregistered trade mark when we found out a company was impersonating us (the legal term is ‘passing off’) on eBay. We found out eBay would ONLY remove them, if we had a registered trademark… despite the fact we were registered for four years, had customers worldwide and had a great reputation in our field. So we registered our trademark in the EU for precisely this reason, just to get a copycat removed. So I’d recommend if you aren’t registering your trademark, AT LEAST register your company name as an eBay user ID (or the closest resemblances of it). I’m not sure if Amazon have the same policy, but I’d recommend doing it on there too, just to be sure.

  • suhan
    suhan
    April 09 2013, 12:51AM

    HI
    Today i came across this amazing new website named nupinch.com…i really think you guys should check it out..
    Link: http://bit.ly/XczfI3

  • Princess
    Princess
    April 18 2013, 12:07PM

    Any background on trademark registration in Africa and Ghana?

  • Aakriti Mehra
    Aakriti Mehra
    April 30 2013, 01:55PM

    HI
    Today i came across this amazing new website named BUYLOGY.in …i really think you guys should check it out…
    http://on.fb.me/17aA0FG

  • Nikki
    Nikki
    July 12 2013, 01:29PM

    Really informative article – thanks Mark. For Canada, the rules are practically the same. You can register your trademark with Trademark Office in Ottawa for $300 ($250 if you do it online) or just bung a trademark sign after your name, brand logo or whatever you want to protect.

  • sarandeep kaur
    sarandeep kaur
    July 21 2014, 04:46AM

    Today I came across this amazing new website named: http://blog.getmetrademark.com/
    i think you should check this site too.

    For registering your trademark do visit:
    http://www.getmetrademark.com/

  • steve
    steve
    September 05 2014, 07:19AM

    Hi, very informative article about trademarks.

    I have a doubt, i’ve already registered my trademark in my home country , what else do i need to run my online store legally if most of my target clients and suppliers are in north america?

  • kindra
    kindra
    October 16 2015, 08:38PM

    Informative comments , I was fascinated by the points – Does someone know if my assistant could possibly access a template 2015 NY MV-82 version to fill in ?

  • alia
    alia
    October 23 2015, 04:10PM

    im am in Italy can I register trade mark in usa ? for my estore

  • Raji
    Raji
    November 02 2015, 08:02AM

    Your trade mark can be a valuable business asset. Trade marks have come to represent not only actual goods and services, but also the reputation of the business. Normally a Trademark indicates to your logo or brand, which is distinctive from your competitors. A trademark can be a word, letter, number, phrase, symbol, shape or combination thereof. To know the trademark registration process at http://www.dobizindia.com/trademark-registration/

  • David Bassett
    David Bassett
    December 01 2015, 04:47AM

    Hi steve….as you already have registered trademark for your company now for further steps I would like to recommend http://marques.expert/. Just visit here and you will get to know what will be the next step.

  • Stephanie
    Stephanie
    December 08 2015, 12:47PM

    This company can help you file a trademark at low cost: https://patentagentblog.wordpress.com/

  • Hanne Langmoen
    Hanne Langmoen
    February 02 2016, 07:35AM

    Great post, however, I would like to understand how this would work for EU and Switzerland more specifically.

    If I put a TM at the end of my logo and selling line, does that mean that I am protected in EU against other brands using MY name?

    Thanks!

  • Adam
    Adam
    February 09 2016, 05:01AM

    Thanks for the above post. Any details on trademarks in Australia?

    Thanks

  • Mike Ferriss
    Mike Ferriss
    March 31 2016, 10:44PM

    Hi guys – My brand/logo are trademarked in the US. I just saw a website, pretty much the same to mine using my brand with an additional word (“store”) and selling same products, but is registered in a country in south america. Anything could be done??
    Thanks! – Mike

  • Hien Nguyen
    Hien Nguyen
    June 10 2016, 01:07AM

    Hi! Mark.
    Good article, but I’m a bit confused. Is this website Shopify name used the trademark word “ify” from Spotify? or Topedia and Investopedia used the trademark word “pedia” from Wikipedia?
    I’m trying to build a blog so I need a website name, and I like to name it “zoomer” with the meaning people would look around for the online info. However, zoomer.com is registered, so I reserved 360zoomer.com. Am I using their trademark word? or Am I okay to do so?
    One more question! I also want to reserve a website with my full name: Hien Kim Nguyen (this full name is a very common). Should I register website name as: HienKimNguyen.com or HienKNguyen.com or NguyenKimHien.com or NguyenKHien.com (as in Vietnam and other countries state last name first).

    Thank you! – Hien

  • Kris Whittaker
    Kris Whittaker
    October 20 2016, 09:16PM

    This article is super informative. The knowledge that I gained from this article is proving to be invaluable. I look forward to reading more and learning more. Thank you Shopify blog!

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