A great way to earn supplementary income as a content creator is to create merchandise. Merchandise comes in a multitude of forms, such as branded clothes, accessories, or gadgets.[1]Usually, content creators come out with merchandise once their fan base demonstrates sizable growth. Specifically, content creators often assess factors such as their brand strength, gauge audience engagement, and identify the goals for their merchandise to determine whether they are ready to come out with merchandise.[2]Once a content creator feels ready to do so, he or she begins the process to create merchandise, also known in the social media world as “merch.”[3]The merchandise is not just a plain black sweatshirt; it is usually a sweatshirt with a logo that the content creator creates or a quote that the content creator once said. Consequently, merch is a way for fans to show their admiration for the content creator and wear the merch in solidarity with them. In other words, for fans, it is no different than buying a band t-shirt at a concert.
However, coming out with merch brings about many potential legal issues regarding how you can protect the merch that you have made. This is most commonly done through a trademark registration for the merch. But you may be wondering, “Do I really need a trademark registration? It sounds complicated and expensive.” The answer is likely yes. So before you create your merch for your Internet fans, read below about how to protect yourself and your brand by pursuing a registered trademark for your merch.
Why Do I Need a Trademark Registration for My Merch?
As you seek to grow your brand as a content creator, a trademark registration is vital to both protect your brand and protect you from legal action. First, a trademark registration protects your brand. A trademark registration legally protects a “word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”[4]As a result, it prevents another individual or company, with few exceptions, from creating products for sale that use the same word, phrase, symbol or design and provides you with legal recourse if an individual or company does try to replicate your mark.[5]
Additionally, trademark registration protects you, as a content creator, from potential legal action that could arise if you unknowingly or mistakenly use another individual or company’s registered mark. If you never look into registering your mark and never conduct a trademark search to see if any other individuals or companies are using the mark that you intend to use, you could wind up in a lawsuit for trademark infringement without even knowing it! As a result, a trademark registration ensures that you—and only you—are legally permitted to use the mark for your specified purposes.[6]
When Is the Right Time to Register a Trademark?
The first question that may come to mind after deciding to pursue a trademark registration is when to do it. This answer varies based on feasibility and finances, but the first step in this process is determining whether the mark has the potential to receive trademark registration. The easiest way to do this is to conduct a trademark search to see if any other individuals or companies use the same or similar mark. Depending on the scope of your business, you may want to conduct just a federal trademark search, a federal and common law search, or even an international search.[7]By running these searches, you may find out that your idea for your word, logo, design, or symbol is already being used by another company. If so, you likely will not be able to use the mark without potential legal issues. Consequently, before committing to a mark and sinking money into its creation and marketing, make sure to run a trademark search to ensure that the mark is not “confusingly similar,” which is the legal standard for this issue,[8]to any other marks that are already in use.
After you have found a mark that is not confusingly similar to any other marks, the next tip is to file for trademark registration before you begin to use the mark. When you file for trademark registration, the United States Patent and Trademark Office (“USPTO”) allows you to either apply based on the “use in commerce” of the mark or the “intent to use” the mark.[9]As the name suggests, a “use in commerce” application means that you are applying for trademark protection after you have already begun to use the mark in commerce.[10]However, an “intent to use” application allows you to apply for trademark protection when you plan to use the mark in the near future, but have not started to use the mark yet.[11]
An “intent to use” application has many advantages. Although you cannot complete the mark registration process under an “intent to use” application until you submit additional paperwork and fees to the USPTO that proves that you are using your mark in commerce, it gets the ball rolling to receive registration with an earlier filing date.[12]In trademark law, filing dates are incredibly important, as they often govern whose mark has priority when a legal issue arises.[13]Thus, filing an “intent to use” application allows you to begin the trademark registration process without risking having another business register a similar mark while you may be busy getting yours off the ground.[14]
How to Register a Trademark
The final issue is the logistics of how to register a trademark. After conducting a trademark search and verifying that the mark is not confusingly similar to any other marks in use, the next step is to file a trademark application. As discussed above, you may file a “use in commerce” or “intent to use” application. You are not legally required to have an attorney to file a trademark application, however, it is highly advised, even by the USPTO itself, as this area requires expertise to address and prove all of the elements in a trademark application.[15]
The federal application is available on the USPTO’s website: https://www.uspto.gov/trademarks-getting-started/trademark-process#step2. Although there are other trademark applications that you may pursue, the USPTO application is the most common and provides you with federal trademark protection throughout the United States. The USPTO application asks you many biographical questions, as well as questions about your mark, such as the format, the classes in which you would like to file, and the basis for filing.[16]The required filing fee for each trademark application ranges from $225 to $400.[17]It is important to note that even if your mark does not ultimately receive registration, the fee that you must pay to file the application is non-refundable.[18]After you fill out the application, you must submit it online through the Trademark Electronic Application System.[19]
After you submit your application, the USPTO may contact you for more information before making a decision about your application.[20]Additionally, your mark officially becomes public record after you submit the application, meaning that anyone can access your information in connection with the application, including your name, phone number, email address, and mailing address.[21]If you are concerned about this information becoming public record, you may consider creating a separate corporate entity to apply for you, meaning that your individual personal information will not be used.
Receiving an answer on whether your mark is approved or denied for registration can take anywhere between six months to a year or more, depending on the volume of applications that the USPTO receives at the time.[22]If your mark is approved, the final step is that the USPTO will publish your mark, and you will receive a certificate of registration that serves as proof of your trademark registration.[23]After your mark is registered, you must monitor your mark, as you are required to periodically file additional paperwork to maintain the registration of your mark.[24]
Conclusion
As you can see, the trademark registration process has many steps, but also many advantages. So before you approve the production of your merch, make sure to look into registering a trademark for your merchandise, whether it be a word, logo, symbol, or design. It will protect you and your brand, so that you can provide merch to your fans without any legal drama.
[1]See, e.g., Lesson: Selling Merchandise from Your Channel, Youtube Creator Academy, https://creatoracademy.youtube.com/page/lesson/merchandise#strategies-zippy-link-1 (last visited Nov. 26, 2019).
[2]See id.
[3]Id.
[4]Protecting Your Trademark: Enhancing Your Rights Through Federal Registration, USPTO, https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf (last visited Nov. 26, 2019).
[5]Mark Brown, The Importance of Trademarks in Business, Marcaria.com, https://www.marcaria.com/ws/en/articles/the-importance-of-trademarks-in-business (last visited Nov. 26, 2019).
[6]See supra note 3.
[7]3 Types of Trademark Searches, Invention Partner,http://www.inventionpartner.com/trademark-search.html (last visited Nov. 26, 2019).
[8]See 15 U.S.C. § 1052(d).
[9]Jane Haskins, When Is the Right Time to Trademark Your Brand?, LegalZoom, https://www.legalzoom.com/articles/when-is-the-right-time-to-trademark-your-brand (last visited Nov. 26, 2019).
[10]See 15 U.S.C. § 1051(a).
[11]See Trademark Applications – Intent-to-Use (ITU) Basis, USPTO, https://www.uspto.gov/trademarks-application-process/filing-online/intent-use-itu-applications (last visited Nov. 26, 2019).
[12]Id.
[13]Id.
[14]See Haskins, supra note 9.
[15]Trademark Process, USPTO, https://www.uspto.gov/trademarks-getting-started/trademark-process#step1 (last visited Nov. 26, 2019).
[16]Id.
[17]Overview of Trademark Fees, USPTO, https://www.uspto.gov/trademark/fees-payment-information/overview-trademark-fees (last visited Nov. 26, 2019).
[18]Trademark Process, supra note 15.
[19]Id.
[20]Id.
[21]Id.
[22]Id.
[23]Id.
[24]Id.
Legal Dos and Don'ts for Social Media Influencers 