How to Use Trademarks to Protect Your eCommerce Business

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Josh GerbenFounder of Gerben Perrott PLLC

Tuesday, December 8, 2020

In today’s global economy, ecommerce businesses have a distinct advantage over their brick-and-mortar competitors. Instead of simply serving the community where the business is located, ecommerce sites can reach anyone anywhere in the world. While this certainly increases your customer base, it also increases the need to protect your brand.

Article 5 Minutes
How to Use Trademarks to Protect Your eCommerce Business

A trademark is anything that indicates a particular product or service is associated with a specific brand. Common trademarks include business or product names, logos and slogans. Some business owners choose to register less traditional trademarks as well, like sounds, colors and smells. A registered trademark will protect your ecommerce business from infringement, which is extremely important when establishing customer recognition and brand loyalty.

You’ll have some very limited protections once you use your mark in public, assuming that a similar mark isn’t already in use by another business. However, in order to obtain the strongest trademark protections and the presumption of nationwide validity, a critical need for ecommerce businesses, you’ll need to register your trademark with the United States Patent and Trademark Office (USPTO).

The benefits of trademarking an ecommerce brand

A trademark registered by the USPTO provides important protections against infringement. Other businesses and individuals within the United States will be prohibited from using a confusingly similar trademark. If potential infringement is found anywhere in the country, you’ll have the right to take legal action. These protections allow you to maintain control of your brand and its reputation, a valuable asset to any ecommerce business.

Going through the trademark registration process can also help protect your brand from infringing on others. If you elect to conduct a trademark search prior to filing an application, you’ll be aware of any similar trademarks that may be problematic. Moving forward with adopting a new brand name without conducting a search and protecting your trademark with a federal registration could be a costly mistake. If it turns out another business is using the mark, and that there’s a likelihood of confusion in the marketplace, you could be asked to shut down your site and rebrand your business, which is both an expensive and time-consuming task.

While all businesses can benefit from trademark registration, some advantages are unique to the ecommerce industry. For instance, if you wish to sell your products on other sites, like Amazon, Etsy or eBay, your registered trademark will receive increased protections against counterfeit goods. Other benefits include programs, like the Amazon Brand Registry, which allow registered trademark owners to enroll and access sales data and additional marketing opportunities.

Not only do registered trademarks provide protections to your brand, they also add value and should be a consideration for every business. Registered trademarks are an asset that can increase in value as your ecommerce business sees success. Trademarks can also be bought and sold like any business asset, and they’re typically a requirement of most investors and anyone looking to potentially buy your business in the future.

Tips for registering trademarks for your ecommerce brand

Below are some suggestions for successfully registering a trademark for your ecommerce brand or product.

Choose a strong mark

The first step in protecting your ecommerce brand through trademark registration is to select a strong mark. The USPTO won’t approve registration with generic or descriptive terms. The business name “Shoe Site,” for example, wouldn’t be a strong trademark. Instead, consider a suggestive or arbitrary mark to represent your brand. Suggestive marks hint at a product or service without explicitly describing it. Netflix is a great example of a suggestive mark. Arbitrary marks, on the other hand, have no relation to the products or services offered. The most well-known ecommerce site in the country, Amazon, uses an arbitrary mark.

Work with a trademark attorney

Once you’ve selected a strong mark, it’s best to engage an experienced trademark attorney. Your attorney will be able to perform a comprehensive trademark search, ensuring no one else is using a similar mark and draft your application to obtain the broadest protections possible. They can also respond to non-substantive Office Actions on your behalf, while you remain focused on other aspects of growing your ecommerce business.

Register for international trademarks

Because ecommerce businesses are part of a global economy, it’s very likely that your business will reach other countries at some point. If you do business outside the United States now, or plan to in the future, you should strongly consider international trademark registration. Start with any country where you sell, manufacture or distribute products or services. You can either apply directly with each country’s trademark office or you can utilize the Madrid Protocol, an international treaty which allows you to file a single application that can then be applied to over 90 member countries.

Keep trademarks consistent and up-to-date

One final tip is to use your trademark consistently, exactly as it appears on your trademark application. This helps with establishing brand recognition and is also a requirement to maintain control of your trademark registration. It’s common for brands to update trademarks like logos or slogans from time to time, but it’s important to know that updated trademarks will require new registrations. Fortunately, if you consistently use your trademark and meet renewal deadlines, your trademark protections will never expire.

Final thoughts

You’ve invested your time and your money into starting your ecommerce business, so it’s important to protect that investment through trademark registration. With trademark ownership, you’ll be able to maintain control of your brand, be protected from infringement and counterfeiting and have access to additional protections on ecommerce sites like Etsy and Amazon. Take the time to select a strong mark and engage an experienced attorney to help you with the registration process. Consider protecting your ecommerce business outside the U.S. as well, especially if you reach customers in other countries. Whether you’re still designing your website or you’ve been online for years, now is the time to register your trademark.

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Josh Gerben

Founder of Gerben Perrott PLLC

www.gerbenlaw.com/

Josh Gerben is the founder of Gerben Perrott PLLC, a full-service intellectual property boutique offering trademark, copyright, and patent services. With multiple offices throughout the U.S., including Philadelphia & Washington D.C., Gerben has secured over 5,000 trademarks for clients and has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more.

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