Your brand is a beautiful, vulnerable thing.
Meaning that all of that (well-spent) time and money that you’ve poured into your business name, logo, slogan (and more) could be meaningless unless you protect it. And the way to do so? With a good ‘ol trademark of course. (Or ‘mark’ as it is referred to in shorthand at cocktail parties and on this page and in the legal world). We’ve gone ahead and laid out a lot of the major questions and concerns associated with trademark so that you can get a glimpse into why it’s so important, what to do about it, and the many ways our legal team can hop in and save the day.
What is a trademark?
A trademark is a symbol, word, or phrase that legally represents a business entity. You could say that trademarks represent what we generally refer to on the streets as logos, slogans, brands, etc. You could also say that anyone can decide that the symbols/words/phrases they use are worthy of trademark protection and start hanging trademark symbols at the end of them willy-nilly, but, on that point, you’d be wrong. Trademarks come into existence either through established use, or registration. So you can’t just come up with a business name and slap a ™ or an Ⓡ on there from day one without going through the official registration process with the United States Patent and Trademark Office (Around here we call it the USPTO. Pretty clever nickname, right?). Also, as we mentioned above, trademarks can be called marks for short so if you see that lingo later on in the page you’ll know we’re not talking about our second cousin. For more on this, head here.
Why do I need one?
As a business owner, trademarks and trademark law serve to protect the brand you’ve worked hard to build. It looks like this: you come up with a distinct (not descriptive) name for your business, register it as a trademark, and from that point, others are legally prevented from using the mark—or one that would be “confusingly” similar—in commerce.
Now, if you hadn’t registered a trademark, you wouldn’t be able to prevent others from using the same (or similar) mark. Moreover—and this is the part that will give you the night sweats—if the user of a same or similar mark decide to register the trademark, they could prevent you from using it as well. Brutal, right? Of course, you have some trademark rights (known as “common law” rights) that you can benefit from without registering, and the issue of who can prevent whom from using a mark also has to do with who was the first to use it. Suffice it to say, however, that trademark registration is the far superior way to of securing your trademark rights, and it is the only way that you will get a shot at collecting certain damages (that means money) from infringers. Read more about that here.
Here are a few more of the benefits of registering your trademark:
- It solidifies your rights in the mark nationally. Right now you only have rights to prevent others from using the name of your business(es) where you are located and possibly places where you have many clients. So if you’re not popular in NYC (for example) and a NY business decides to trademark the name of your business, they could limit your use of the name to the areas where your business currently has a presence and they would get the national rights to the business name; which would totally suck for you.
- It gives you the ability to license the use of your content and products to others which expands the reach of your work and makes you more money. For example, if you wanted to give other entrepreneurs the ability to buy a license to use your proprietary methods to work with their own clients or wanted to license your brand name to another business, you need to secure the trademark rights first (you could technically do it without the trademark registered but that’s a very bad idea).
- Owning your trademark also increases the value of your business and brand so its something to consider if you ever want to obtain outside capital, sell your business or leave your business to a family member.
- Another reason to trademark your company name is to prevent copycatters from unjustly benefiting from the brand recognition you’ve built up. Having a federally registered trademark comes with harsh penalties for would-be infringers, which serves as a big deterrent to copycatters and counterfeiters.
How many trademarks do I need?
The amount of trademarks you need depends entirely on your business. For example, do you want to register only your business name? Then you need 1 trademark. If you want to register both your business name and your company logo, you need 2 trademarks. If you want to register your business name, company logo and a tagline or slogan, you need 3 trademarks. Other trademarks you might want to secure include the names of your best selling products or services and any other word, name, symbol, sound or scent (yes, you can trademark sounds and scents!) that is a key brand identifier and distinguishes your company in the marketplace. Not sure? We can help you determine what to protect and if you have multiple marks, what order is in your business’s best interest based on your current and future plans.
How do I know if I can use my trademark?
Once you’ve selected a strong mark for the name of your product or company, the next step is to conduct a trademark search to ensure that someone else hasn’t already established rights in the proposed mark. You’ll be presumed to be aware of every mark on the Federal Register (that’s the Feds list of every federally registered trademark). So if you start using a mark and later find out that it was registered to someone else, then, at worst, you could be liable for trademark infringement. At best, you could be forced to shut down your website and change the name and brand of your company.
But there’s any easy fix for this, simply conduct a trademark search before you commit to that new name you want to use. The U.S. Patent and Trademark Office’s database is located at http://tess2.uspto.gov. Once you’re sure there is no other company using the mark in the classes you want to register in, then you’ll want to conduct a further search to see if there are any companies that may have common law rights to the name you want to use (i.e., they haven’t registered the trademark yet, but they’re actively using the mark to sell goods or services and therefore may have what’s called common law trademark rights in the mark). For more on a comprehensive search, check out this post.
What makes a good trademark?
In order to obtain trademark protection, your mark should be distinctive and unique in identifying your company and the goods and services associated with it. Typically, distinctive trademarks fall into three categories:
- Fanciful names. These are made up words that have no meaning outside their use by your company. For example, Google and Exxon are both made up words and therefore make for very strong trademarks.
- Arbitrary names. Arbitrary names refer to real words used in a way that is unrelated to their normal meaning. The most obvious example of this is Apple. Apple is not a word that is often associated with computers, making it a really strong mark for computers (and a terrible mark for a company selling actually apples).
- Suggestive names. Suggestive names are those that use words that suggest a quality or characteristic of the goods or services. Examples of this include Netscape for computer software and Chicken of the Sea for tuna.
There is one category of trademarks that are not distinctive and those are descriptive marks. Descriptive marks are the obvious choice for a business name and therefore are not unique and often not protectable under trademark law. Descriptive marks often describe the product or service directly, use the owner’s name or describe the geographic location of a product or service. Examples of descriptive marks include Smith Shoes, Hilton Hotels, The New York Times. Descriptive marks can only be registered with the USPTO once they have acquired secondary meaning, which means that the company is so well-known that people have come to associate the mark with a particular company or product. Until a secondary meaning is established in a descriptive mark, the mark typically cannot be registered. You can read more on that right here.
What’s a specimen?
A specimen is something that shows the mark being used in commerce in the class or classes the registration application is using. For example, your specimen could be a product package showing the mark or an e-book you sell that features the mark. The two main requirements for a specimen are that they show the mark actually being used in commerce—i.e. for sale—and that it was actually publicly available as shown for the date you are using on the application. So, if you are only using the mark on items you give away right now, those items wouldn’t make acceptable specimens since they aren’t actually being used IN COMMERCE. Providing a valid specimen is a key requirement of the trademark registration application so having one to use can help you determine when and what type of application to file.
When should I register my trademark?
Generally speaking, we recommend registering your mark when you’re actively using your mark in commerce. This will save you a bit of money in filing fees, make the process a bit simpler, and make specimens easier to produce. That said, there can be some valid reasons why you would want to protect your mark before you are publicly using it. Once you have a bona fide intent to use the mark and a rough estimate of when you’ll be using the mark in commerce, you have the option to file an intent to use basis application. This basically means you’re starting the process of protecting you mark even though it isn’t being used in commerce. After you go through the basic registration steps, you’ll then need to show you are now using it in commerce before your registration is complete and official.
How do I know what classes to file in?
In the context of trademark, goods and services are divided into classes (45 of them, to be exact). The classes you’ll need are determined entirely by your goods or services. Each class has very specific parameters for what it covers so those will guide you to what class you need. As with everything trademark related, the class descriptions are somewhat arbitrary and arcane so it isn’t as simple as saying “oh I sell coaching services so I should be in class X.” For example, if you’re offering some kind of coaching and operate solely online, you might register in one class to cover the videos and e-books you produce, and then in another class to cover your actual coaching services. As we work with you on your application, there are several opportunities to determine the best classes to file in based on what you are currently doing. Since each class has it’s own filing fee and you have to show you are actually using the mark in that way, it is often important to find a balance between cost, protection, and use.
What are the filing fees I can expect?
If you’re already using the mark in commerce, the online TEAS Plus application is the best choice for many registrants. This application costs $225.00 per class. A class is like a “category” for goods and services. You’ll definitely register in at least one class and the number of additional classes depends on your business. Most of our clients register in 1-3 classes, and some, with more extensive goods and services offerings, register in additional classes.
If you are registering a trademark that you are not already using (but have a bona fide intent to use) you will also likely use the TEAS Plus application. However, in addition to the $225.00 per class fee, you’ll also pay a $100.00 fee per class to file your Statement of Use. This is how you show the USPTO that you are actually using the mark in commerce since you weren’t using it when you first filed your application.
You can find some more information on basic filing fees for your trademark registration here.
Why should I hire a lawyer to handle our trademark application? Can’t I just do it myself?
The trademark application looks fairly straightforward, but, in practice, it isn’t (tricky beast). The truth is that a large percentage of trademark applications that are filed by business owners, without the help of an attorney, wind up being abandoned. What usually happens is that a business owner tries to file the application themselves, things get complicated, and they give up. In fact, about half of the companies for whom we have secured trademarks attempted to do it themselves at first, but faced obstacles along the way, so they wound up hiring us to do it. There are strict requirements and deadlines involved with a trademark registration so on top of the intricacies of the application you have to be sure to keep track of those as well. Read all about that here or watch the video here.
Why should I choose Rodgers Collective to handle my trademark registrations?
Glad you asked. First of all, we provide the expertise you need to handle your trademark application professionally and efficiently all while offering you an excellent client experience. Your trademark application will be handled from start to finish by myself or one of our experienced trademark attorneys. Secondly, we strive to surprise and delight our clients and will do our very best to exceed your expectations. Last but not least, there will be no “bait and switch.” The pricing detailed on this page is the pricing you can expect to pay. You will not receive an additional bill for attorney’s fees throughout the entire trademark registration process. It can be tempting to go with a very low-cost budget option but keep in mind you may end up getting hit with additional fees throughout the process or risk not having the support you need as you progress through the process.
How long does it take you to complete my trademark registration?
We will complete your trademark registration within 7-10 business days from when we receive your intake form. If there is an urgent matter pending, such as trademark infringement, faster turnaround times are definitely possible.
What happens after my trademark application is submitted to the USPTO?
Once your trademark application is submitted, we’ll monitor the application and respond to all correspondence from the USPTO. This includes responding to any Office Actions issued by the USPTO (these are preliminary denials which occur in 80% of trademark applications) including drafting a substantive legal brief where necessary. And no, we do not charge you anything extra to respond to office actions, even in challenging cases where multiple office actions are issued.
Once the application is initially approved by the USPTO, the next step is the publication process. The USPTO publishes an Official Gazette where your trademark is published for a 30 day period so that anyone who feels they may be harmed by the registration of your mark has a chance to oppose it. Once that period ends (assuming there’s no opposition), your mark becomes official and the certificate is mailed about 6-8 weeks later.
What is an Office Action?
An office action is a preliminary refusal of your mark. This can be based on a number of things including that your mark is too descriptive for registration, there are previously registered or applied for marks that are identical or similar to yours. There are a variety of reasons too that are not always immediately obvious why an Examining Attorney will determine your mark is too similar to another mark. This is dubbed likelihood of confusion and is a very common office action issued during the registration process. An office action can contain one issue for you to address or several. Office actions look like legal briefs, and you must respond with convincing arguments (legal and factual) of your own to overcome them. If you can’t change the EA’s mind, your mark will be rejected.
Office actions are extremely common and in fact, roughly 80% of the time the USPTO will issue at least one. And, if your description didn’t have a good broad/narrow balance in the original application, you won’t have much to work with when it comes to making arguments and even edits to get the mark passed. Once you submit the application you cannot add anything to the description, you can take away, but you can’t add. If you can’t change the EA’s mind, your mark will be rejected and all your time and money invested thus far will have been wasted.
What happens once my trademark registered?
If you got it, flaunt it. Seriously. One of the main benefits of registering your trademark is that you can put others on notice that your brand, logo, etc. is protected. So, put those symbols to use. Surely you’ve seen the ™ ℠ ® floating around out there.
When can I start using the ™ ® ℠? And what do they actually mean?
The ™ Symbol
This little fella is used in connection with the sale of goods, and puts the rest of the world on notice that you— as an individual or entity—have claimed rights in whatever term, logo, or slogan as a trademark. However, it also means that although you’ve staked your claim, your trademark has not yet been registered, and its use doesn’t guarantee that the mark will be protected under trademark laws. So, anyone who is interested in your mark, upon seeing the ™ will understand that you’ve staked your claim, but might check in on your registration process either to oppose your registration on some basis, or to see if your registration is rejected.
The ℠ Symbol
This one is a lot like the ™ symbol, but you would use it in connection with services, instead of goods. Also like the ™ symbol, use of ℠ gives notice of your claim on the mark, but is no guarantee that the mark will be protected under trademark laws.
The ® Symbol
This symbol is the ®eal deal. You use the ® symbol once your mark as actually been registered. It provides constructive notice to all those players out there that you have legal ownership over the mark, and that they should check themselves before they wreck themselves. (In this case wrecking themselves would mean infringing on your mark, but you probably got that, right?).
Each of these symbols usually appear alongside the mark itself in superscript. If you’re not into the whole superscript thing, then you can use the phrase “Reg. U.S. Pat. Off.” in lieu of the ®, which performs the same function. (But seriously, how could you not be into superscript? It’s like the puppies and kittens of regular-sized font—super adorable.) Read more on those symbols here.
Does a trademark last forever?
A trademark lasts for as long as you are using it in commerce and defending it against infringement—assuming you file the proper documents to maintain the registration. You must file a Declaration of Use with the USPTO between the 5th and 6th year after the date your mark registers, and file renewal documents between the 9 & 10th years and every ten years thereafter. If you don’t file these documents, your mark will be considered abandoned…i.e. up for grabs.
Someone is using my mark without permission, what do I do?
You have some options, because the best strategy depends on who is using your mark, how, and why. If you think the infringement is unintentional, or if the infringer is a small business, or someone you work with, you may want to call them up and play nice. If you think someone is deliberately ripping you off, you probably want to go right to issuing a cease and desist letter. You can find examples of these online, but definitely don’t copy and paste it, make sure it is tailored to your situation and says what you need it to say. Keep in mind that getting infringement to stop will be a lot easier if you registered your trademark with the USPTO.
I received a cease and desist notice, now what?
First, take a close look and see if all of the facts in the Cease and Desist are correct. Does the person who sent the Cease and Desist own the trademark that you are using? Did they include a valid Federal registration number? Are you using the mark that they say you are using? Do you have valid rights to use the mark? If you ask all of these questions and you think the Cease and Desist is valid, you will have to stop using the mark altogether. That may mean changing your business name or product name, giving up your social media handles, throwing away any business cards or letterhead that contains the mark, etc. On the other hand, if it seems like the Cease and Desist isn’t valid (often because you have the right to use the trademark you are using), then you can contact the other person and tell them why you think they are wrong and why you won’t stop using the mark. Honestly, this is one of those things that is best handled by an attorney, because trying to figure out the validity of a Cease and Desist requires some detailed legal knowledge.
Should I register my mark internationally?
The answer to this question depends on whether you feel that your brand has equity outside the U.S. These days, brand equity abroad is a reality for far more businesses than would have had it a couple of decades ago because, as we all know, The Internet in general, and social media in particular, have changed the business landscape drastically. However, this doesn’t mean that every business with a Facebook page and some aspect of online operations needs to register their trademark abroad. This is a decision that depends a lot on what you are doing now, and what you plan to do in the future. Here’s a few things for you to chew on:
- Are you currently doing business, or marketing your products/services, in other countries?
- Do you have plans of doing business, or marketing your products/services, in other countries?
For more on this, just click here.