What is a trademark?
A trademark is a legally protected symbol, word, phrase, design, or combination of these elements that identifies and distinguishes the source of goods or services of one party from those of another. Trademarks help consumers to identify and distinguish the products or services of a particular company or individual from those of its competitors.
Trademarks are essential to businesses because they create brand recognition and value, and they help to establish and maintain a company’s reputation. Trademarks also provide legal protection against infringement by other parties, preventing them from using the same or a similar mark in connection with similar goods or services.
To obtain a federal trademark, the owner must file an application with the United States Patent and Trademark Office (“USPTO”) and meet certain criteria, such as demonstrating that the mark is distinctive and not likely to cause confusion with other marks already in use. Once registered, a trademark can be enforced through legal action, and the owner can prevent others from using the mark without permission.
What is the Difference Between a Name and a Logo?
A “name” (a.k.a. “word mark”) is a type of trademark that consists solely of words or letters, and it is used to identify and distinguish the source of goods or services of one party from those of another. Examples of word marks include brand names such as Coca-Cola, Nike, or Apple.
On the other hand, a logo (a.k.a. “design mark”), also known as a logo or a stylized mark, is a trademark that includes a unique design, image, or graphic element that identifies and distinguishes the source of goods or services of one party from those of another. Examples of design marks include the Nike “swoosh” symbol, the Apple logo, or the golden arches of McDonald’s.
Finally, a brand can be either one or both of the above. A brand refers to how you market your services to the relevant public that is interested in your goods or services.
The primary difference between a word mark and a design mark is that a word mark uses words or letters to identify a brand, while a design mark uses a unique visual element to do the same. Some brands use a combination of both a word mark and a design mark to create a strong brand identity that is easily recognizable by consumers.
Do I Need a Name, Logo or Both?
Whether you need a name or a logo or both depends on your business needs and goals.
A name is essential as it serves as the primary identifier of your business. Your business name is how people will recognize and refer to your business. A strong business name should be unique, memorable, and easy to pronounce, and it should reflect your brand’s values, products, or services. Generally, I recommend filing for a word mark first.
A logo, on the other hand, is a visual representation of your brand that helps to reinforce your brand identity and make it easily recognizable to customers. A well-designed logo can help to create brand recognition and establish brand loyalty. Usually, it is a good idea to get this second since most businesses will tweak their design.
A slogan is a catchphrase that is associated with your goods or services. A good slogan will strengthen brand recognition. I generally recommend filing this last.
In most cases, it is best to have both a name and a logo that work together to create a strong brand identity. A good logo design should incorporate your business name and reflect your brand’s values, products, or services. It is important to ensure that your name and logo are legally available and do not infringe on the trademarks of others.
How Does the Trademark Process Work?
The trademark process involves several steps. Here is a general overview of the trademark process that we follow:
- Conduct a trademark search: Before filing a trademark application, it is important to conduct a trademark search to ensure that the mark you want to register is not already in use by someone else. You can conduct a trademark search on the trademark office’s website or hire a trademark attorney to conduct a more comprehensive search.
- File a trademark application: Once you have determined that your mark is available, you can file a trademark application with the relevant trademark office. Your application should include the name and address of the applicant, a description of the goods or services associated with the mark, and a clear representation of the mark.
- USPTO Examination: A USPTO Examining Attorney will examine your application to ensure that it meets the legal requirements for registration. This is a government attorney assigned to your file, and not your attorney. They cannot provide legal advice. The office will check to see if the mark is distinctive, not confusingly similar to other marks, and not prohibited by law. We offer professional, legal answers to Office Actions the USPTO issues.
- Publication for opposition: If the trademark office approves your application, it will publish your mark in the Official Gazette. This is not registration. It is only a short window, exactly 30 days, during which others can oppose your application if they believe it conflicts with their own trademark rights.
- Registration: If no one opposes your trademark application, or if any opposition is resolved in your favor, your mark will be registered. You will receive a certificate of registration, and you can begin using the ® symbol to indicate that your mark is a registered trademark.
The entire trademark process can take several months to a few years, depending on the complexity of your application and any opposition that may arise. It is important to work with a qualified trademark attorney to ensure that your application meets all legal requirements and that your trademark rights are protected.
What is a Common Law Trademark?
A common law trademark is a type of trademark that arises from the use of a particular mark in commerce. Common law trademarks are based on the legal principle of “first use,” meaning that the first person or company to use a particular mark in connection with a product or service gains exclusive rights to that mark within a particular geographic area. Common law trademarks are very weak when it comes to obtaining remedies (i.e., money or a court order to stop) but do provide a basis for “first use.”
Common law trademarks are not registered with the USPTO, but they may still provide legal protection against others who attempt to use the same or a similar mark in the same geographic area. Common law trademark protection is generally limited to the geographic area in which the mark is used, whereas registered trademarks are protected nationally.
The main disadvantage of relying on a common law trademark is that it can be difficult to prove ownership and enforce your rights in court. Registered trademarks, on the other hand, are easier to enforce, and provide stronger legal protection—such as money damages, attorney fees, or court orders to stop—as they are officially recognized and registered with a government agency.
Why Bother with Trademark Registration if I Have a Common Law Trademark?
While a common law trademark may provide some legal protection, there are several reasons why it is important to consider registering your trademark with the USPTO:
- Nationwide protection: Common law trademarks are only protected within the geographic area where they are used, while a registered trademark provides nationwide protection.
- Presumption of ownership and validity: By registering your trademark, you gain a legal presumption of ownership and validity of the mark. This can make it easier to enforce your trademark rights if someone else attempts to use or infringe upon your mark.
- Increased legal protection: A registered trademark provides stronger legal protection against infringers, as you can recover damages and attorneys’ fees if someone infringes upon your mark. In addition, you may be entitled to additional remedies, such as injunctions, if your mark is registered.
- Brand recognition and value: A registered trademark helps to build brand recognition and value over time, as consumers begin to associate your mark with your products or services. This can make your business more valuable and attractive to potential investors or buyers.
In short, while a common law trademark may provide some legal protection, registering your trademark with a trademark office provides additional legal protection, nationwide protection, and increased brand recognition and value. It is important to consult with a trademark attorney to determine the best course of action for your business.
What are State Trademarks?
State trademarks are relics from a bygone era that are still with us today to provide protection to a state or territory. Back in the day, the United States Supreme Court ruled that Congress had no authority to protect or regulate trademarks – this was superseded by the Trademark Act of 1905. Imagine how difficult, time consuming, and expensive it would be to register a trademark with each state with which you do business, and then maintain it.
These trademarks that are registered with a state government, rather than with the federal government. State trademark registration is generally less expensive and less complicated than federal registration, and it can be a good option for small businesses that operate only in one state or region. State trademark registration typically covers the use of the mark within that state or region, and it provides the trademark owner with legal protection against others using a similar mark in that area.
However, state trademarks have some limitations when compared to federal trademarks. The most significant limitation is that state trademark protection is generally limited to the geographic area in which the mark is registered, while federal trademark registration provides nationwide protection. In addition, federal trademarks have the benefit of being enforceable in federal court, which can provide stronger legal protection than state court.
I Just Did a Trademark Search and Found Nothing. Why Should I Have You Search?
A trademark search is vital to trademark registrability. If there is even a single letter difference, or if you have a logo but another mark is a word (or vice versa), or even if there is a mark with the same meaning in a foreign language, your trademark filing will get the dreaded Likelihood of Confusion Office Action.
Examples of Marks receiving refusals:
- DINAMO and DYNAMO for software as a service (SaaS)
- PILGRIM and LA PEREGRINA for jewelry (translates to the same meaning)
If I had to guess, you searched the USPTO’s Trademark Electronic Search System (“TESS”) under “Basic Word Mark Search (New User).” Unfortunately, this is a futile direct hit search. You probably also searched the first two pages on Google. This is a common law search. While this is a good start, it not enough because it does not show the searcher (you) the full picture.
A proper search takes into account different spellings, variations, and composite marks. For example, there may be similar marks that were not identified in your search, or there may be other legal issues that could prevent your mark from being registered. In addition, even if your mark is unique, it may still be considered too generic or descriptive to be eligible for trademark registration.
Therefore, it is important to consult with a trademark attorney before filing your trademark registration application. An experienced attorney can help you evaluate your trademark search results and determine whether your mark is likely to be approved for registration.
What Is the Difference Between Use In Commerce And Intent To Use?
In the United States, there are two ways to apply for trademark registration: based on use in commerce or based on intent to use.
Use in commerce means that the trademark is currently being used in connection with goods or services in the marketplace. In a use in commerce application, the applicant must provide a specimen or example of the mark as it is used in connection with the goods or services, and evidence of the use of the mark in interstate commerce.
Intent to use means that the applicant has not yet used the mark in commerce but has a bona fide intention to do so in the future.
The main difference between use in commerce and intent to use is the timing of the application. A use in commerce application is filed after the mark is being used in commerce, while an intent to use application is filed before the mark is being used in commerce. There are strategic reasons to file an intent to use application as well.
Once a trademark application based on intent to use is approved, the applicant will need to file a Statement of Use (“SOU”) demonstrating that they have started using the mark in commerce. Failure to file a SOU or Extension of Time within the required timeframe can result in the abandonment of the application.
In summary, the main difference between use in commerce and intent to use is the timing of the application. Use in commerce applications are filed after the mark is being used in commerce, while intent to use applications are filed before the mark is being used in commerce, with the requirement to file a statement of use at a later time.
I Filed My Corporate/LLC Name, Isn’t That the Same as a Trademark?
No. Filing your corporate or LLC name with the state does not automatically provide you with trademark protection for your business name or logo. While registering a corporate or LLC name does provide you with some legal protection by limiting liability, it is not the same as trademark protection.
A corporate or LLC name is a legal name that is used to identify your business entity in your state. It does not necessarily provide you with exclusive rights to use that name in connection with your goods or services. A corporate entity or LLC is a “legal fiction” – it is there to stand between creditors and your personal assets.
A federal trademark provides you with exclusive rights to use that mark in connection with your goods or services, and it allows you to prevent others from using a similar mark in a way that could confuse consumers. A corporation or LLC does not do that because it does not give you a legal right to owning a brand name.
If I Want to Get a Trademark, Should I Get an LLC/Corporation First?
Forming an LLC or corporation is not a requirement for obtaining a trademark, but it can provide certain benefits and protections for your business.
The key benefits are:
- The LLC stands in place of you, shielding you from liability.
- Using the LLC/corporate name instead of your personal name.
- You can use a business address instead of your home.
- No need to reassign from your individual name to a business entity.
On the other hand, if you do not want to go through this process, we can simply file under your personal name. You can always reassign the trademark later.
I Secured the Domain Name, So Do I Even Need a Trademark?
Securing a domain name does not automatically grant you legal ownership over a name. A domain name is simply an address on the internet that points to your website or online presence.
On the other hand, a trademark is a legal protection for your brand name, logo, or other identifying marks that distinguishes your goods or services from those of others in the marketplace.
Finally, a domain name is not good evidence of use in commerce for a specimen.
I Want to Register My Name, But I Saw Someone Using the Same Name Without a Filing — Can I File a Trademark?
If someone else is using the same or a similar name to yours without a trademark registration, you may still be able to register your name as a trademark, but there are some important factors to consider.
First, you will need to determine whether the other party’s use of the name creates a likelihood of confusion with your proposed use. The main purpose of trademark law is to prevent consumer confusion, so if there is a likelihood of confusion between the two uses, it could impact the registrability of your proposed trademark.
Second, you will need to determine whether the other party’s use of the name creates any legal obstacles to your use of the name as a trademark. For example, if the other party has been using the name in connection with similar goods or services for a significant amount of time, they may have common law rights to the name that could impact your ability to use and register the name as a trademark.
In general, it is a good idea to consult with a trademark attorney before filing a trademark application in a situation where there is another party using a similar name without a trademark registration. For situations like this, I recommend a comprehensive search plus legal analysis so you can learn whether or not you can use the name.
What Are the Five Phases of Trademark Protection?
Protecting a trademark is an on-going process. In order to properly protect a trademark, you must do the following:
- Hire an experienced trademark attorney to conduct a comprehensive search for a trademark. While hiring an attorney is not necessary the USPTO strongly recommends it. We do not sugar-coat things; I cannot tell you how often I have to deliver unfortunate news to clients about conflicts with other trademarks.
- File for trademark, answer any Office Actions, and move it towards registration to preserve your exclusive right to the name, logo, or slogan. Again, a skilled trademark attorney improves your odds.
- Monitoring your filing and registration to ensure no one else is filing similar marks or using them without your authorization.
- Enforce your trademarks against infringers. If you see someone using your mark for the same goods and/or services, you can:
- Hire an attorney to send them a cease-and-desist letter. Just make sure they aren’t using the trademark in commerce first. Why? Because that means they may have priority over your mark. This why its critical to have an attorney do this.
- Filing opposition during the pendency of their trademark filing at the Trademark Trial and Appeal Board (“TTAB”).
- If their mark registers, file a cancellation proceeding at the TTAB.
- File a suit in federal district court.
- License or Assign Your Trademark. A license is legal permission to use a trademark for a certain purpose and limited to a specific period. You become the licensor and can charge a licensee money to use your trademark. An assignment is usually a complete sale of the ownership of the trademark. If you ever decide to exit the brand, you can monetize by selling the brand to someone else.
Why Shouldn’t I Consider Trademark Filing Companies?
Because sadly, some of these companies are running shady practices: Some are outside of US jurisdiction, putting their email in the correspondence line instead of yours (so you never receive any communication from the USPTO), or using non-attorneys. And a few have been sanctioned, causing their customer’s trademarks to receive cancellations. It is hard to know which one is “legit” since they use the same trademark website layout.
While it is tempting to accept their Google Ads offers for $49, I can assure you that you will pay more in the long run for the following three reasons:
- Some of these filing “companies” or “services” are not even companies, they are online software programs. Trademark filing companies, by and large, automate the process to software that simply copies-and-pastes your responses into a trademark application. Unfortunately, the trademark application filing is a legal process and copy-and-paste is not at all what we do. And your response will make it to an Examining Attorney at the USPTO who will see you used a software filing company. Not a great start to a filing.
- If you give them a call, a poorly paid non-attorney representative in an offshore call center will pick up. If you attempt to speak with them, they will make unrealistic guarantees, try to upsell, and attempt to tell you about US law. Did you catch the last part? A non-attorney representative in an offshore call center will attempt to counsel you. That is 100% unacceptable.
- Finally, what do you do if you receive a substantive Office Action? These companies will decline to represent you because they are merely software programs, like Trademark Engine. Now you must get an actual U.S.-licensed attorney to fix a problem caused by a trademark filing software program. Sounds like something you should have done to start.
If you do decide to go with a trademark filing company, know that the average response time is nine to ten months, and you may never see any return. To avoid this headache, USPTO recommends hiring a trademark attorney.
Why Should I Hire Syed Law Versus Other Law Firms?
Today, savvy business owners prefer to hire individuals who focus on one thing. For instance, if you wanted to explore health benefits for employees, you probably would not a CPA. There are more attorneys alive today than in the past, but few focus only on intellectual property (“IP”) law. Fewer still focus only on trademark law, an IP law sub-genre.
Syed Law has built a niche IP boutique around trademark law. By going with a US-licensed attorney who deals day-in and day-out with this area, you are committing yourself to getting the best possible outcome. Attorneys who dabble in this area of law may have a shaky understanding about how to best help and counsel clients. Worse, they may not have time to fully dedicate to your matter. On the other hand, my law firm can competently and diligently complete your goals in a timely manner.
Another reason is cost. It is not uncommon to see attorneys who charge $500-$600 per hour these days. We use flat fee pricing so you can predict your costs upfront. You can rest easy knowing how much our services are without the added anxiety of “bill-by-the-hour” law firms. We only use hourly rates in rare instances, such as litigation matters, and our rates are far more competitive.
Finally, since trademark law is federal, my law firm represents clients from all 50 U.S. States.
What Information Do I Need To Provide You To Get Started On My Trademark Filing?
To get started on your trademark, I would need the following information:
- The name or word(s) you want to trademark: This is the core element of your trademark and it should be unique, distinctive and not already in use by someone else in a similar field.
- The type of goods or services you want to use the trademark for: Your trademark will be registered for a specific class of goods or services. A trademark is not a blanket protection of the word or logo (e.g., DOVE for chocolate versus DOVE for soap).
- Your current business status: Whether you’re an individual, a partnership, or a corporation. This is important for determining the ownership of the trademark. It helps to know how long you have been in business and your goals with this trademark.
- “Use in commerce” or “intent to use”: Under federal and common law, trademark priority rights arise only through use. However, in order to “reserve” your status with the USPTO, it may be helpful to file first, even if there merely an intent to use (but no actual use). For more sophisticated brands, this is usually the preferred method since they plan several years down the road.
- Evidence: Assuming there is “use,” it helps to know what types of specimens (shorthand for evidence) you must submit to that use. In the event the specimens are not sufficient, I can provide some guidance on what will work. Likewise, if we file a non-use application, I can help point you in the right direction.
- What prompted you to obtain trademark help: Sometimes, I have clients reach out to me when they are anxious or nervous about a competitor. Other times, they overhead someone make a remark about their business branding or name. Of course, there are situations where there is blatant infringement.
Once I have this information, we can start the process. There may be other questions that come along the way, but this is generally sufficient to get started.
What Does It Mean if a Trademark Attorney Has a “Conflict”?
If I or another attorney tell you we have a conflict, what we are saying is that we cannot represent you because of ethics rules regarding other former, current, or prospective clients.
Usually this arises because we represented or spoke to someone in the past that may conflict with your interests. Because our duty of confidentiality continues after representation, we cannot proceed unless we get a conflict waiver from them.
For example, let us say I represented someone in a trademark filing for BIZSULTNG for business coaching, but you want to file for BIZSULTING for business consulting. These marks overlap substantially. That would lead to a conflict with my previous or current client (depending upon whether that person is still our law firm’s client).
Sometimes getting a conflict waiver may not be possible.
For instance, let us say you came to me with the trademark BLUEGIRAFFE for software, and decided not to use my services. If later on another entity contacts me asking me to bring suit against you for your mark, I would have to decline and simply say “I have a conflict.” This makes perfect since it would be unfair to you to use the information you provided in confidence to me against you. In addition, I would not ask you for a conflict waiver in this instance — it would be silly to do that.
It would be unethical for me to proceed, so I would politely say “Unfortunately, I have a conflict.” Sometimes, I may be able to refer your matter to a colleague who I trust.
How Do I Decide the Appropriate International Class for my Trademark?
The International Classification of Goods and Services (Nice Classification) is a system used to classify goods and services for the purposes of registering trademarks. The Nice Classification has 45 classes, with classes 1-34 for goods and classes 35-45 for services.
To determine the appropriate international class for your trademark, you need to identify the specific goods and/or services that your trademark will be associated with. The Nice Classification provides a list of goods and services that fall under each class, making it easier to identify the correct class for your trademark.
It’s important to note that if your trademark covers multiple goods or services, you may need to file in multiple classes. Additionally, it is crucial to ensure that your goods or services fall within the scope of the class you choose.
Filing in the wrong Class could result in your trademark receiving an Office Action, and the USPTO does not allow amendments to broaden the scope of an Identification. And this happens to often to businesses who either (1) go it alone; (2) use trademark filing “service”; or (3) hire an attorney not focused on trademark law.
This is where I can help — book a kick-off call or contact us.