“What Can Trademarks
Do for Me?”
Just as you actively guard your personal and financial information against theft, as a business owner, you need to take steps to protect your brand identity in order for it to remain your brand identity.
That’s where trademark protection comes into play.
Trademark protection can apply to words, names, symbols, designs, colors and other marks used to identify the source of a good.
When you register a trademark, you receive “exclusive rights” to use a specific mark and preclude others from using a mark that may cause confusion in the marketplace.
In the U.S., receiving a federal trademark lets you utilize the federal registration symbol ®, otherwise known as the “circle R.” Before submitting a federal registration application or while one is pending, you’re entitled to use “TM” or “SM,” otherwise known as “trademark” or “service mark,” respectively.
Commonly Trademarked Items:
- Your brand name(s)
- Your business name
- Model names
- Slogans or taglines
- Logos
- Product designs
- Packaging designs, including restaurant or store designs
“Why Trademark?”
Developing a distinct brand requires a lot of time and money. Registered trademarks protect your investment by giving consumers a way to recognize your products or services and associate them with the goodwill and reputation that surrounds your brand.
In other words, trademarks are important to differentiating you from your competitors. They’re also crucial to establishing and maintaining brand value.
In addition, trademark protection plays a key role in defending your products from unauthorized use or duplication. With counterfeit activity more prevalent than ever, registering your marks is becoming more and more important, especially if you’re active in foreign markets.
Trademarks Create Consistency
Trademarks allow you to unify your product or service offerings and create a consistent look and feel for your brand.
Some Trademarks
are Better than Others
Some trademarks are stronger than others. This refers to the ease of which a mark or identifier can be protected. A strong mark is one that is unique or “arbitrary” to your product or service.
Generic Trademarks – Weakest
Cannot be protected
Describe an entire product category and are no longer able to be registered
Examples: Thermos, Telephone
Descriptive Trademarks – Weak
Fairly difficult to protect
Have a direct connection to the product and/or its characteristics
Examples: Bed and Breakfast Registry (for an online reservation service), Kentucky Fried Chicken (for chicken that’s fried and from a business originally started in Kentucky)
Suggestive Trademarks – Strong
Fairly easy to protect
Have a slight connection to the product/service without actually describing it
Examples: Bowflex, Chipotle
Fanciful & Arbitrary Trademarks – Strongest
Easiest to protect
Have no connection to the product or service
Examples: Lay’s, Apple
Registering
Trademarks in the U.S.
In the United States, trademark protection is granted on a “first-come, first-served basis.” If you can prove that you are the first person to use a particular mark or identifier, it cannot be registered to or used by someone else.
To register a trademark at the federal level, an application must be filed with the United States Patent and Trademark Office (USPTO).
An experienced attorney can guide you in applying for U.S. or international trademark registration. Perhaps more importantly, an attorney can advise on how to proceed should your application encounter opposition from the USPTO or a competitor.
Federal Registration –
“Now or Later?”
A good rule of thumb is to file a federal trademark registration when you begin to market your products or services across state lines. If your only market is your home state, consider using a “TM” (trademark) or “SM” (service mark) superscript following your mark to let the general public know you have common law rights in your mark. You should also file a state registration to protect what rights you do have.
If you’ve applied for a federal registration, the “TM” or “SM” symbols can be used to identify your rights to a particular mark while your application is pending.
Intent-to-Use Applications
If you have a mark that you haven’t yet used in commerce, an “Intent-to-Use” (ITU) application can reserve your rights to it before the mark is brought to the marketplace. Once you start using a mark, an ITU can become a full registration with the filing of a “Statement of Use.”
Federal Registration
Has Its Benefits
Here are the main advantages of federal trademark registration:
- Federal registration gives you the right to use the federal registration symbol: ®
- Courts presume you are the rightful owner of a mark
- During litigation, your mark is presumed to be valid unless challengers can prove otherwise
- Should you discover counterfeit activity concerning your registered trademarks, you’ll have the ability to file a lawsuit in federal court and receive monetary damage
- You may use your federal registration as the basis for filing an international trademark
- You can request that U.S. Customs officials monitor import activity for counterfeit goods bearing your mark
Registering Trademarks Internationally
You can file for trademark protection in each individual country where you are planning to do business, or you can use the “Madrid System” offered by the World Intellectual Property Organization (WIPO).
The Madrid System allows you to protect, manage and maintain your marks in 96 different countries and territories with the filing of a single application.
Each country still requires their own filing fees, and reserves the right to deny registration in their country, but the Madrid System compiles all activities related to your international trademark registration in one convenient location under one cohesive.
Trademark Registration:
DIY vs. Legal Companies
vs. Law Firms
Filing your trademark registration application is a simple concept. But the process you must follow and the rules governing that process are complex. Here are the three options you have along with their respective pros and cons:
Doing It Yourself
Applying for trademark registration yourself is a low-cost, high-risk option.
It’s low-cost because you’ll only be required to pay a federal filing fee. It’s high-risk because there is a significant chance of improperly narrowing your goods and services description, which could leave some of your products or services unprotected.
You may also submit an overly broad goods and services description, which exposes your mark to a challenger filing a cancellation proceeding in order to invalidate your mark.
You may even select the wrong class of goods and services altogether. If you get it wrong, you cannot amend your application. Instead, you must completely refile, which requires a fresh set of filing fees be paid.
It’s possible that your application could receive approval despite having an inaccurate or “fraudulent” goods and services description or classification, but that doesn’t mean your mark is strongly protected. You’ll almost certainly face problems later on when you go to enforce your trademark against someone else, as it likely won’t hold up against claims of “invalidity.”
Utilizing Legal Technology Companies
Some legal technology companies offer a self-help resource, but they themselves are not law firms. Using such a service requires a minimal investment, but presents many of the same risks as going it alone.
In most cases, the lower the service fee you encounter, the more likely it is that your goods and services description is being taken verbatim and placed into your application without any kind of review or analysis.
That is to say, you’re really doing it yourself; you’re just paying someone else to transcribe it into your application for you. Because of this, your chances of running into problems with your goods and services description and classification remain high.
Some legal technology companies give you an opportunity to consult with an attorney for an additional fee, but sessions are usually capped at 30 minutes.
Working with a Law Firm
While going it alone or using a legal technology company will save you a few dollars, in most cases, the expertise and guidance you’ll receive working with experienced counsel make it well worth the investment.
An attorney can make sure your registration application is completed properly by choosing the right goods and services classification and ensuring the goods and services description is tailored specifically to your business.
Perhaps most important to consider is that 80% of trademark applications are rejected by the USPTO. For those that are rejected, there is some sort of Office Action that is received along with the rejection letter.
If your application is rejected and you receive an Office Action, your attorney can assist you in deciding if the USPTO’s rejection can be overcome. If it can, there are several possible options, not all of which require rebranding and refiling. If it can’t, you can choose to abandon your application and walk away completely.
But in most cases, if you file a response to the Office Action and strategically address the concerns of the trademark examining attorney responsible for reviewing your application, you can achieve registration. The key is having legal expertise at your disposal to ensure you don’t make a mistake that could cost you later or give up on an application too soon.
The Goods and Services Description
As mentioned above, part of the trademark registration process involves submitting a detailed goods and services description.
Your goods and services description helps the USPTO determine the eligibility of your mark. It’s also your opportunity to tell the world what exactly your mark covers. Think of the mark like a piece of property – the goods and services description is the fence around your property. The better your goods and services description, the stronger your fence.
Trademark Searches
Sometimes referred to as “clearance searches” or “infringement searches,” trademark searches are a way to determine if your mark stands a good chance of being registered with the USPTO.
Trademark searches can vary in their scope, which is usually dependent upon the product or service being considered.
A basic preliminary or “knockout” search is a quick way to identify any competing marks that could be judged as identical or highly similar to your own.
A trademark search has two main objectives:
- To discover any potential hurdles that could prevent your mark from achieving registration
- To examine the likelihood that your mark would infringe on someone else’s
While a preliminary search is usually sufficient for trademarks applications filed by startups and other small businesses, operations experiencing significant growth and an ever-expanding market reach will want to invest in a more thorough and complete process known as “comprehensive search.”
Comprehensive searches involve an attorney who surveys previously filled federal trademarks and takes into account common law and web-based uses of a trademark. The results of the comprehensive search are provided in a formal opinion on the risk, or lack thereof, of attempting to register your mark.
Comprehensive searches also allow for a more precise goods and services classification, thus lessening the chances of rejection from the USPTO.
The Timeline
- Initial consultation with your attorney (if applicable)
- If you decide to move forward and a preliminary search of your mark comes up clean, your trademark application is often filed within 3-5 business days.
- From there, your application is typically assigned to an examining attorney at the USPTO within three (3) months.
- Once assigned, the examining attorney will review your application and deliver a response in the form of an approval or a rejection with an accompanying Office Action.
- If you receive an Office Action, you have up to six months to file a response.
- Should you file a response, your original examining attorney will once again review your application for registration, taking into account any changes or new arguments included in your application.
- If your application is approved, you will receive an official registration certificate.
In total, the trademark application and registration process takes between six (6) and 18 months.
Maintaining Your Trademarks
Trademark registrations are good for as long as your continue to use your mark and submit periodic renewal forms to the USPTO. The first renewal application is due five (5) years after registration and the second is due 10 years after registration. Thereafter, renewals are due every 10 years. Failure to submit your renewal application on time will result in the cancellation of your trademark registration.
Enforcing Trademarks
Once you receive a trademark, you’re ultimately responsible for enforcing and defending it against unauthorized use. The easiest way to keep an eye on your trademarks is to stay familiar with your industry segment and your competition.
There are “watch services” – such as those offered by the Corporation Service Company – that will notify you or your attorney if someone else is attempting to register or use a trademark that is the same or similar to your own. This is highly recommended for companies that do business in a crowded or competitive marketplace.
If you are made aware of someone else infringing upon your trademark, your options include the issuing of a cease and desist letter. If that is unsuccessful, litigation can be explored.
Trademarks –
Use ‘Em or Lose ‘Em
Even after your trademarks have been registered, their strength depends on how you treat them. Trademark protection can be compromised and even lost if the average consumer sees a trademark as “generic.” Aspirin is a well-known example of a former trademark that has become generic because most consumers now think the good itself is called “aspirin,” whereas previously, consumers understood “Aspirin” to be the source of acetylsalicylic acid.
How to Avoid “Genericide”:
Other than always remembering to apply a “Circle R” (®) to all applicable marks and identifiers, here are some other ways you can preserve your trademarks:
Don’t Experiment With Your Mark
Avoid using your mark in plural form
Example of what not to do: “Purchase two Pepsis for refreshment now and later.”
Don’t Let Your Mark Blend In
Before your mark appears in public, make sure it’s outfitted properly with capital letters and font treatments (as necessary).
Example of what not to do: “For years, energizer batteries have been sold in the world’s largest retailers.”
Don’t Disregard Grammar
Don’t use your mark as a noun or verb, but an adjective.
Example of what not to do: “Don’t clean your windows, Windex them!”
Start Here
Before meeting with an attorney to file your trademark application, you’ll want to consider the following checklist:
- The individual or entity that will own the trademark
- Whether the mark is a word or logo
- If it’s a logo, be prepared to supply a black and white .jpeg file
- If you want to claim a color or colors as a key part of your logo, be sure and include that information
- If your mark is a foreign word, your attorney will want to know if there is an English-language equivalent that you’re hoping your primary audience understands.
- Compile a list of the products and services where you use the mark you are looking to register. This will help your attorney determine the right goods and services classification.
- If you currently use your mark, your attorney will need to know the date that you started using the mark along with the earliest date you used that mark on the goods or services you are attempting to trademark. This can help to support your ownership claims over a mark should you face litigation in the future.
- For example, a coffee shop serving local residents began using its mark when it opened on January 1, 2010. Then, the coffee shop began distributing its products online to customers in other states on May 1, 2013. The second date would be the date used when filing an application for the coffee shop.
- Supply your attorney with “specimens,” which are examples of your mark being used in commerce. An experienced attorney can help you identify what is or is not a proper specimen, which can reduce the chance of receiving an Office Action.
Legal Information is Not Legal Advice